IPR2020-01437 (P.T.A.B. Jan. 11, 2021)

Proven Networks, LLC

Patent Trials and Appeals BoardJan 11, 2021

IPR2020-01437 (P.T.A.B. Jan. 11, 2021)

Trials@uspto.gov Paper No. 9 Tel: 571-272-7822 Entered: January 11, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ NETAPP, INC., Petitioner, v. PROVEN NETWORKS, LLC, Patent Owner. ____________ IPR2020-01437 Patent No. 8,018,852 ____________ Before TREVOR M. JEFFERSON, JOHN A. HUDALLA, and SCOTT E. BAIN, Administrative Patent Judges. BAIN, Administrative Patent Judge. DECISION Settlement Prior to Institution of Trial 37 C.F.R. § 42.74 IPR2020-01437 Patent No. 8,018,852 2 On December 23, 2020, pursuant to our prior authorization, the parties filed a Joint Motion to Terminate proceedings in this case. Paper 7 (“Motion”). Along with the Motion, the parties have filed a “true and complete copy of the Parties’ Stipulation and Motion for Dismissal (ECF No. 32, attached as Exhibit 1026) and the Court’s Order granting the same (ECF No. 33, attached as Exhibit 1027) in the U.S. District Court litigation captioned Proven Networks, LLC v. NetApp, Inc., Case No. 6:20-cv-00369 (W.D. Tex. filed May 7, 2020).” Paper 7, 1. The parties state that the “Dismissal Order resolves any claim by Patent Owner Proven Networks, LLC that Petitioner NetApp, Inc., the real party-in-interest in the present proceeding, has infringed the ’852 patent.” Id. The parties further certify that “there are no other agreements or understandings, oral or written, between Patent Owner and Petitioner, including any collateral agreements, made in connection with, or in contemplation of, the termination of the present proceeding.” Id. According to the parties’ Motion, they have resolved their dispute with respect to the ’852 patent, and have agreed to terminate this inter partes review. Id. at 2. The parties also state that they are aware of no “public interest or other factors militate against termination of this proceeding.” Id. These proceedings are at an early stage. Patent Owner has not filed a response, and the Board has not yet determined whether to institute trial. Under these circumstances, we determine that it is appropriate to dismiss the petition. See 37 C.F.R. §§ 42.5(a), 42.71(a). This paper does not constitute a final written decision pursuant to 35 U.S.C. § 318(a). IPR2020-01437 Patent No. 8,018,852 3 Accordingly, it is ORDERED that the Joint Motion to Terminate IPR2020-01437 is granted; and FURTHER ORDERED that the Petition for Inter Partes Review in IPR2020-01437 is dismissed. PETITIONER: Erika H. Arner A. Grace Mills Joshua L. Goldberg Justin N. Mullen FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP erika.arner@finnegan.com gracie.mills@finnegan.com joshua.goldberg@finnegan.com justin.mullen@finnegan.com PATENT OWNER: Kent Shum Neil A. Rubin Reza Mirzaie RUSS AUGUST & KABAT kshum@raklaw.com nrubin@raklaw.com rmirzaie@raklaw.com rak_proven@raklaw.com