RFCyber Corp.

Patent Trials and Appeals Board

Oct 20, 2021

IPR2021-00956 (P.T.A.B. Oct. 20, 2021)

Trials@uspto.gov Paper 12
571-272-7822 Date: October 20, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

GOOGLE LLC,
Petitioner,
v.
RFCYBER CORP.,
Patent Owner.

IPR2021-00954 (Patent 8,448,855 B1)
IPR2021-00955 (Patent 9,189,787 B1)
IPR2021-00956 (Patent 9,240,009 B2)
IPR2021-00957 (Patent 8,118,218 B2)1

Before PATRICK R. SCANLON, KEVIN W. CHERRY, and
KRISTI L. R. SAWERT, Administrative Patent Judges.
SAWERT, Administrative Patent Judge.

DECISION
Granting Joint Motion to Terminate Due to Settlement Prior to Institution
35 U.S.C. § 317; 37 C.F.R. §§ 42.71(a), 42.74

1 We exercise our discretion to issue a single Decision to be entered in
each case using a joint caption. The parties are not permitted to use this
caption. For convenience, we use the Paper and Exhibit numbers from
IPR2021-00954.
IPR2021-00954 (Patent 8,448,855 B1)
IPR2021-00955 (Patent 9,189,787 B1)
IPR2021-00956 (Patent 9,240,009 B2)
IPR2021-00957 (Patent 8,118,218 B2)

2
On October 19, 2021, Google LLC (“Petitioner”) and RFCyber Corp.
(“Patent Owner”) filed a joint motion to terminate these proceedings
pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74. Paper 10 (“Motion” or
“Mot.”). The motion was accompanied by a true, unredacted copy of a
settlement and license agreement (Ex. 1040), and a joint request to treat the
agreement as business confidential information, to be kept separate from the
patent file, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c)
(Paper 11).
The parties represent in their joint motion that they have settled their
dispute regarding the patents challenged in these inter partes review
proceedings, and have agreed to terminate these proceedings. Mot. 2. The
parties state that there are no other Board proceedings between the parties
involving the challenged patents. Id. Additionally, the parties state that they
have settled their dispute in the related district court litigation, RFCyber
Corp. v. Google LLC and Google Payment Corp., Case No. 2:20-cv-00274-
JRG (E.D. Tex.), and “do not anticipate further litigation between them
concerning the” challenged patents. Id.
The Board generally expects that a case “will terminate after the filing
of a settlement agreement, unless the Board has already decided the merits.”
Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14,
2012); see also 37 C.F.R. § 42.72. These proceedings are in a preliminary
stage, and no decisions on whether to institute any trial have been issued.
Under the circumstances presented here, we determine that it is appropriate
to dismiss the petitions and terminate these preliminary proceedings with
IPR2021-00954 (Patent 8,448,855 B1)
IPR2021-00955 (Patent 9,189,787 B1)
IPR2021-00956 (Patent 9,240,009 B2)
IPR2021-00957 (Patent 8,118,218 B2)

3
respect to both Petitioner and Patent Owner. Accordingly, we grant the
parties’ joint motion to terminate.
We also determine that the parties have complied with the
requirements of 37 C.F.R. § 42.74(c) to have the settlement and license
agreement treated as business confidential information and kept separate
from the patent files of the challenged patents. Thus, we grant the joint
request to treat the settlement and license agreement as business
confidential.
Accordingly, it is
ORDERED that the joint motion to terminate is GRANTED;
FURTHER ORDERED that Google LLC’s petitions for Inter Partes
Review of U.S. Patent Nos. 8,448,855 B1, 9,189,787 B1, 9,240,009 B2, and
8,118,218 B2 are DISMISSED, pursuant to 37 C.F.R. §§ 42.5(a) and
42.71(a); and
FURTHER ORDERED that the joint request to treat the parties’
settlement and license agreement as business confidential information, to be
kept separate from the patent file, is GRANTED.
IPR2021-00954 (Patent 8,448,855 B1)
IPR2021-00955 (Patent 9,189,787 B1)
IPR2021-00956 (Patent 9,240,009 B2)
IPR2021-00957 (Patent 8,118,218 B2)

4
For PETITIONER:
Andrew Ehmke
Michael Parsons
Vinu Raj
HAYNES & BOONE LLP
Andy.ehmke.ipr@haynesboone.com
Michael.parsons.ipr@haynesboone.com
Vinu.raj.ipr@haynesboone.com

For PATENT OWNER:
Vincent Rubino
Peter Lambrianakos
Enrique Iturralde
Richard Cowell
FABRICANT LLP
vrubino@fabricantllp.com
plambrianoks@fabricantllp.com
eiturralde@fabricantllp.com
rcowell@fabricantllp.com