Sable IP, LLC

Patent Trials and Appeals Board

Feb 11, 2021

IPR2021-00048 (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. and DELL TECHNOLOGIES INC.,
Petitioner,

v.

SABLE NETWORKS, INC.,
Patent Owner.
____________

IPR2021-00048
Patent 7,428,209 B1
____________

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

HOWARD, 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

IPR2021-00048
Patent 7,428,209 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 3, 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 February 1, 2021. Joint Motion 1. The
Parties filed a Settlement Agreement (Exhibit 2001, “Settlement
Agreement”) and a Joint Request of Cisco Systems, Inc. and Sable
Networks, Inc. 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.
IPR2021-00048
Patent 7,428,209 B1

3

Petitioner Cisco Systems, Inc., and Patent Owner also requested that
the Settlement Agreement be treated as business confidential information
and be kept separate from the file of Patent 7,428,209. Joint Request 1.
Although Petitioner Dell Technologies does not join the request, Petitioner
Cisco Systems, Inc., and Patent Owner represent that Dell Technologies
does not oppose the request. Id. 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
IPR2021-00048 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
7,428,209, 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).

IPR2021-00048
Patent 7,428,209 B1

4

For PETITIONER:
Theodoros Konstantakopoulos
Yung-Hoon Ha
Leslie Spencer
Christian Dorman
DESMARAIS LLP
tkonstantakopoulos@desmaraisllp.com
yha@desmaraisllp.com
lspencer@desmaraisllp.com
cdorman@desmaraisllp.com

Christopher T.L. Douglas
Lauren N. Griffin
ALSTON & BIRD LLP
christopher.douglas@alston.com
lauren.griffin@alston.com

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