Oceana Innovations LLC

Patent Trials and Appeals Board

Dec 14, 2020

IPR2020-01272 (P.T.A.B. Dec. 14, 2020)

Trials@uspto.gov Paper 9
571–272–7822 Date: December 14, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

FRONTIER COMMUNICATIONS CORPORATION,
Petitioner,

v.

OCEANA INNOVATIONS, LLC,
Patent Owner.
_______________

IPR2020-01272
Patent 6,508,678 B1
_______________

Before MINN CHUNG, KAMRAN JIVANI, and
STEPHEN E. BELISLE, Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

DECISION
Settlement Prior to Institution of Trial
Granting Request to Keep Agreement Confidential
35 U.S.C. § 317; 37 C.F.R. § 42.74
IPR2020-01272
Patent 6,508,678 B1

2
I. DISCUSSION
With Board authorization, Frontier Communications Corporation
(“Petitioner”) and Oceana Innovations, LLC (“Patent Owner”) filed a Joint
Motion to Terminate. Paper 6 (“Motion” or “Mot.”). In the Motion, the
parties state that they have settled their dispute regarding U.S. Patent
No. 6,508,678 B1 (“the ’678 patent”) by entering into a Settlement and
License Agreement. Mot. 2. The parties also filed a joint request to treat the
settlement agreement (Paper 8) as business confidential information under
35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 7.1
This proceeding is in the preliminary stage, Patent Owner has not filed
a preliminary response, and no decision whether to institute a trial has been
made. The parties indicate that the settlement agreement resolves all
disputes between the parties regarding the ’678 patent. Mot. 2, 3. In
addition, the parties state that “[t]hey entered no other agreement, written or
oral” in connection with the termination of this proceeding. Under these
circumstances, we determine that it is appropriate to dismiss the Petition
(Paper 2) and terminate this proceeding. See 37 C.F.R. §§ 42.71(a),
42.74(a).
After reviewing the parties’ settlement agreement (Paper 8), we find
the settlement agreement contains business confidential information
regarding the terms of the settlement and good cause exists to treat the
settlement agreement as business confidential information under 35 U.S.C.
§ 317(b) and 37 C.F.R. § 42.74(c). Accordingly, the parties’ joint request

1 Although the joint request states that the settlement agreement is filed as
Exhibit 1016 (Paper 7, 2), no such exhibit has been filed. Instead, the parties
filed a copy of the settlement agreement as Paper 8.
IPR2020-01272
Patent 6,508,678 B1

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(Paper 7) to treat the parties’ settlement agreement as business confidential
information is granted.
The parties also filed the joint request itself (Paper 7) under seal. But
the joint request is not accompanied by a motion to seal, nor does the joint
request explain why it contains confidential information. See id. Upon
reviewing Paper 7, we do not find anything in the document that would
qualify as confidential information. See 37 C.F.R. § 42.2 (“Confidential
information means trade secret or other confidential research, development,
or commercial information.”). Accordingly, Paper 7 will be made accessible
to the public after one week from the date of this Decision unless, within the
period of one week, the parties file a motion to seal explaining why the
document contains confidential information to be shielded from the public.
II. ORDER
It is hereby
ORDERED that the Joint Motion to Terminate is granted;
FURTHER ORDERED that the parties’ joint request to treat the
settlement agreement (Paper 8) as business confidential information and be
kept separate from the files of the ’678 patent under the provisions of
35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is granted;
FURTHER ORDERED that the joint request (Paper 7) will be made
accessible to the public after one week from the date of this Decision unless,
within the period of one week, the parties file a motion to seal explaining
why Paper 7 contains confidential information to be shielded from the
public; and
FURTHER ORDERED that the Petition is dismissed and this
proceeding is terminated as to all parties.
IPR2020-01272
Patent 6,508,678 B1

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FOR PETITIONER:

Robert Hover
John Powell
VERRILL DANA, LLP
rhover@verrilldana.com
patents@verrilldana.com

FOR PATENT OWNER:

Robert D. Katz
KATZ PLLC
rkatz@katzfirm.com

Jonathan Szarzynski
SZARZYNSKI PLLC
jon@szarzynski.com