Neptune Subsea IP LimitedDownload PDFPatent Trials and Appeals BoardMay 5, 2020IPR2020-00610 (P.T.A.B. May. 5, 2020) Copy Citation Trials@uspto.gov Paper 8 571.272.7822 Entered: May 5, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ NOKIA OF AMERICA CORPORATION, Petitioner, v. NEPTUNE SUBSEA IP LIMITED, Patent Owner. ____________ IPR2020-00610 Patent 8,380,069 B2 ____________ Before GREGG I. ANDERSON, SCOTT C. MOORE, and JASON W. MELVIN, Administrative Patent Judges. ANDERSON, Administrative Patent Judge. DECISION Settlement Prior to Institution of Trial 37 C.F.R. § 42.74 IPR2020-00610 Patent 8,380,069 B2 2 On April 30, 2020, the parties filed a “Joint Motion by Petitioner and Patent Owner to Terminate Proceeding Pursuant to 35 U.S.C. § 317 and 37 C.R.R. § 42.74” (“Motion,” “Mot.,” Paper 6). The Petition in this proceeding challenges the patentability of U.S. Patent 8,380,069 (“the ’069 patent”). The Motion requests termination based upon a settlement reflected in a “Settlement and Patent License Agreement” (“Agreement,” Ex. 1100). Mot. 1.1 The parties concurrently filed a “Joint Request to File Settlement Agreement as Business Confidential Information” pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c)” (“Confidentiality Motion,” (“Conf. Mot.,” Paper 7). The parties request that Exhibit 1100 be treated as business confidential information and be kept separate from the file of the involved patent. Conf. Mot. 1. “A party to a settlement may request that the settlement be treated as business confidential information and be kept separate from the files of an involved patent or application.” 37 C.F.R. § 42.74(c). The parties jointly certify that Exhibit 1100 is a true and correct copy of the signed Agreement. Mot. 1; Conf. Mot. 2. The parties represent that the Agreement settles all litigation between them, with respect to the ’069 patent. Conf. Mot. 1. The parties also certify that Exhibit 1100 “represents all agreements made in connection with, or in contemplation of, the termination of this proceeding” and all agreements made in contemplation of 1 Prior authorization required for the filing of a motion to terminate was obtained by email. See Mot. 1; 37 C.F.R. § 42.20(b). IPR2020-00610 Patent 8,380,069 B2 3 termination of this proceeding have been filed as required by § 317(b) and 37 C.F.R. § 42.74(b). Id. at 2. No decision concerning whether or not to institute a trial has been made. Accordingly, it is in the interests of the Board and the parties that this preceding be terminated. ORDER Accordingly, it is ORDERED that the Motion (Paper 6) is granted; FURTHER ORDERED that that the Agreement (Exhibit 1100) be treated as business confidential information, be designated “Parties and Board Only,” and be kept separate from the files of the involved U.S. Patent 8,380,069; and FURTHER ORDERED that the Petition is hereby dismissed. IPR2020-00610 Patent 8,380,069 B2 4 PETITIONER: Wesley C. Achey John D. Haynes David S. Frist Nicholas T. Tsui ALSTON & BIRD LLP wes.achey@alston.com john.haynes@alston.com david.frist@alston.com nick.tsui@alston.com PATENT OWNER: Yar R. Chaikovsky Philip Ou PAUL HASTINGS LLP yarchaikovsky@paulhastings.com philipou@paulhastings.com Copy with citationCopy as parenthetical citation