Sable IP, LLC

Patent Trials and Appeals Board

Feb 11, 2021

IPR2020-01721 (P.T.A.B. Feb. 11, 2021)

Trials@uspto.gov Paper 10
571-272-7822 Entered: February 11, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

CISCO SYSTEMS, INC.,
HEWLETT PACKARD ENTERPRISE COMPANY and
ARUBA NETWORKS, INC.,
Petitioner,

v.

SABLE NETWORKS, INC.,
Patent Owner.
____________

IPR2020-01721
Patent 7,012,919 B1
____________

Before GARTH D. BAER, SCOTT B. HOWARD, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.

DIRBA, Administrative Patent Judge.

DECISION
Granting Joint Motion to Terminate Proceeding Due to
Settlement before Institution and
Granting Joint Request to Treat Settlement Agreement as
Business Confidential Information
37 C.F.R. § 42.74

IPR2020-01721
Patent 7,012,919 B1

2

I. INTRODUCTION
Petitioner and Patent Owner (collectively “the Parties”) have
requested that the above-identified inter partes review proceeding be
terminated pursuant to a settlement. On February 1, 2021, the Parties filed a
Joint Motion to Terminate the above-identified proceeding (“Joint Motion”).
Paper 8. The Parties previously sought authorization to file the joint motion
and received that authorization on January 29, 2021. Joint Motion 1. The
Parties filed a settlement agreement (Exhibit 2001, “Settlement Agreement”)
and a Joint Request to Treat Settlement Information as Business
Confidential Information and Keep Separate (“Joint Request”). Paper 9.
II. DISCUSSION
In the Joint Motion, the Parties represent that they have reached an
agreement to jointly seek termination of this inter partes review proceeding,
that the filed copy of the Settlement Agreement is a true and correct copy,
and there are no other collateral agreements or understandings made in
connection with, or in contemplation of, the termination of this proceeding.
Joint Motion 1–3. The Parties also represent that their disputes have been
resolved. Id. at 1.
We have not yet instituted a trial on the above-identified proceeding.
Nor have we decided the merits of the proceeding, and a final written
decision has not been entered in the proceeding. The Parties have shown
adequately that the termination of the proceeding is appropriate. Under
these circumstances, we determine that good cause exists to terminate the
proceeding with respect to the Parties.
The Parties also requested that the Settlement Agreement be treated as
business confidential information and be kept separate from the file of Patent
IPR2020-01721
Patent 7,012,919 B1

3

7,012,919. Joint Request 1. After reviewing the Settlement Agreement, we
find that the Settlement Agreement contains confidential business
information regarding the terms of settlement. We determine that good
cause exists to treat the Settlement Agreement between the Parties as
business confidential information pursuant to 35 U.S.C. § 317(b) and 37
C.F.R. § 42.74(c).
This Order does not constitute a final written decision pursuant to 35
U.S.C. § 318(a).
III. ORDER
Accordingly, for the reasons discussed above, it is:
ORDERED that the Joint Motion to Terminate is granted, and
IPR2020-01721 is terminated with respect to Petitioner and Patent Owner;
and
FURTHER ORDERED that the Joint Request to File Settlement
Agreement as Business Confidential Information is granted, and the
Settlement Agreement shall be kept separate from the file of Patent
7,012,919, and made available only to Federal Government agencies on
written request, or to any person on a showing of good cause, pursuant to
35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).

IPR2020-01721
Patent 7,012,919 B1

4

For PETITIONER:
Daniel W. McDonald
Jeffrey D. Blake
MERCHANT & GOULD P.C
dmcdonald@merchantgould.com
jblake@merchantgould.com

Tiffany C. Miller
James M. Heintz
DLA PIPER LLP (US)
tiffany.miller@dlapiper.com
jim.heintz@dlapiper.com

For PATENT OWNER:
Kenneth J. Weatherwax
Patrick Maloney
Jason C. Linger
LOWENSTEIN & WEATHERWAX LLP
weatherwax@lowensteinweatherwax.com
maloney@lowensteinweatherwax.com
linger@lowensteinweatherwax.com