Sable IP, LLC

Patent Trials and Appeals Board

Feb 11, 2021

IPR2021-00166 (P.T.A.B. Feb. 11, 2021)

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

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

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

v.

SABLE NETWORKS, INC.,
Patent Owner.
____________

IPR2021-00061 (Patent 8,085,775 B1)
IPR2021-00166 (Patent 8,817,790 B2)1
____________

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

BAER, Administrative Patent Judge.

DECISION
Granting Joint Motions to Terminate Proceeding Due to
Settlement before Institution and
Granting Joint Requests to Treat Settlement Agreements as
Business Confidential Information
37 C.F.R. § 42.74

1 This Order applies to both proceedings. The parties are not authorized to
use this style heading for any subsequent papers.
IPR2021-00061 (Patent 8,085,775 B1)
IPR2021-00166 (Patent 8,817,790 B2)

2

I. INTRODUCTION
Petitioner and Patent Owner have requested that the above-identified
inter partes review proceedings be terminated pursuant to a settlement. On
February 4, 2021, the parties filed a Joint Motion of All Parties to Terminate
in each of the above-identified proceedings (“Joint Motion”). Paper 9.2 The
parties previously sought authorization to file the joint motions and received
authorization on February 1, 2021. Joint Motion 2. The parties also filed a
settlement agreement (Paper 113) and a Joint Request to Treat Settlement
Information as Business Confidential Information and Keep Separate
(Paper 10, “Joint Request”) in each of the above-identified proceedings.
II. DISCUSSION
In the Joint Motions, the parties represent that they have reached an
agreement to jointly seek termination of these inter partes review
proceedings, that the filed copies of the settlement agreements are true and
correct copies, and there are no other collateral agreements or
understandings made in connection with, or in contemplation of, the
termination of these proceedings. Joint Motion 1–5. The parties also
represent that their disputes have been resolved. Joint Motion 2.
We have not yet instituted a trial on the above-identified proceedings.

2 For expediency, we cite to the Papers filed in IPR2021-00061, unless
otherwise indicated. Similar Papers were filed in IPR2021-00166.
3 Although labeled as Exhibit 2001, the settlement agreement was filed as
Paper 11 in IPR2021-00061. The parties are reminded that evidences such
as the settlement agreement must be filed as exhibits. See 37 C.F.R.
§ 42.63(a) (“Evidence consists of affidavits, transcripts of depositions,
documents, and things. All evidence must be filed in the form of an
exhibit.”). The settlement agreement was filed as Exhibit 2001 in IPR2021-
00166.
IPR2021-00061 (Patent 8,085,775 B1)
IPR2021-00166 (Patent 8,817,790 B2)

3

Nor have we decided the merits of the proceedings, and final written
decisions have not been entered in the proceedings. The parties have shown
adequately that termination of the proceedings is appropriate. Under these
circumstances, we determine that good cause exists to terminate the
proceedings with respect to the parties.
The parties also requested that the settlement agreements be treated as
business confidential information and be kept separate from the files of the
patents involved in these proceedings. Joint Request 1. After reviewing the
settlement agreements, we find that the settlement agreements contain
confidential business information regarding the terms of settlement. We
determine that good cause exists to treat the settlement agreements 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 Motions to Terminate are granted, and each
of IPR2021-00061 and IPR2021-00166 is terminated with respect to
Petitioner and Patent Owner; and
FURTHER ORDERED that the Joint Requests are granted, and the
settlement agreements shall be kept separate from the respective files of
Patents 8,085,775 B1 and 8,817,790 B2 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).

IPR2021-00061 (Patent 8,085,775 B1)
IPR2021-00166 (Patent 8,817,790 B2)

4

For PETITIONER:
Patrick McPherson
Patrick Muldoon
DUANE MORRIS LLP
PDMcpherson@duanemorris.com
pcmuldoon@duanemorris.com

Jonathan Tuminaro
Michael Specht
Daniel Block
STERNE, KESSLER, GOLDSTEIN & FOX, P.L.L.C.
jtuminar-ptab@sternekessler.com
mspecht-ptab@sternekessler.com
dblock-ptab@sternekessler.com

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

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