Proven Networks, LLC

Patent Trials and Appeals Board

Aug 10, 2021

IPR2021-00889 (P.T.A.B. Aug. 10, 2021)

Trials@uspto.gov Paper No. 9
571.272.7822 Entered: August 10, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

MICROSOFT CORP.,
Petitioner,

v.

PROVEN NETWORKS, LLC,
Patent Owner.
____________

IPR2021-00889
Patent 8,812,454 B2
____________

Before TREVOR M. JEFFERSON, PATRICK M. BOUCHER, and
JOHN A. HUDALLA, Administrative Patent Judges.

BOUCHER, Administrative Patent Judge.

DECISION
Settlement Prior to Institution of Trial
37 C.F.R. § 42.74

IPR2021-00889
Patent 8,812,454 B2

2
On July 6, 2021, with the Board’s authorization, Microsoft Corp.
(“Petitioner”) and Proven Networks, LLC (“Patent Owner”) (collectively
referred to as “the Parties”) filed a Joint Motion to Terminate the above-
identified proceeding due to settlement. Paper 7 (“Joint Motion”). In
support of the Joint Motion, the Parties filed copies of: a Patent License and
License Option Agreement between RPX Corporation and Proven Networks,
LLC (Ex. 2001, “Patent License and License Option Agreement”); and a
Release Agreement between Microsoft Corp. and Proven Networks LLC
(Ex. 2002, “Release Agreement”) (collectively referred to as “Agreements”).
In further support of the Joint Motion, the Parties also filed a Joint Request
to Keep Separate. Paper 8 (“Joint Request”).
In the Joint Motion, the Parties represent that they have reached an
agreement to jointly seek termination of this inter partes review proceeding,
and that the filed copies of the Agreements are true and complete copies.
Joint Motion 1–2. The Parties further represent the dispute involving U.S.
Patent 8,812,454 has been resolved. Id at 1.
This proceeding is at an early stage, and we have not yet decided
whether to institute a trial in the proceeding. In view of the early stage of
the proceeding and the settlement between the Parties, we determine that
good cause exists to terminate the proceeding with respect to the Parties.
The Parties also filed a Joint Request that the Agreements be treated
as business confidential information and be kept separate from the file of
U.S. Patent No. 8,812,454. Joint Request 1. After reviewing the
Agreements, we find that the Agreements contain confidential business
information regarding the terms of settlement. We determine that good
cause exists to treat the Agreements as business confidential information
pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
IPR2021-00889
Patent 8,812,454 B2

3
This Order does not constitute a final written decision pursuant to 35
U.S.C. § 318(a).

Accordingly, for the reasons discussed above, it is:
ORDERED that the Joint Motion is granted, and the proceeding is
terminated;
FURTHER ORDERED that the Joint Request is granted, and the
Agreements shall be kept separate from the files of U.S. Patent No.
8,812,454 and made available only to Federal Government agencies on
written request, or to any person on a showing of good cause, pursuant to 37
C.F.R. § 42.74(c).
IPR2021-00889
Patent 8,812,454 B2

4
PETITIONER:
James M. Heintz
DLA PIPER LLP (US)
jim.heintz@dlapiper.com

PATENT OWNER:
Reza Mirzaie
C. Jay Chung
RUSS AUGUST & KABAT
rmirzaie@raklaw.com
jchung@raklaw.com