Teleputers, LLC

Patent Trials and Appeals Board

Jun 1, 2021

IPR2021-00078 (P.T.A.B. Jun. 1, 2021)

Trials@uspto.gov Paper 13
571-272-7822 Date June 1, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

ORACLE CORPORATION and ORACLE AMERICA, INC.
Petitioner,

v.

TELEPUTERS, LLC,
Patent Owner.
____________

IPR2021-00078
Patent 7,174,014 B2

____________

Before BRYAN F. MOORE, GEORGE R. HOSKINS, and
KRISTI L. R. SAWERT, Administrative Patent Judges.

HOSKINS, Administrative Patent Judge.

DECISION
Settlement Prior to Institution of Trial
37 C.F.R. § 42.74
IPR2021-00078
Patent 7,174,014 B2

2
I. INTRODUCTION
With the Board’s authorization, Petitioner and Patent Owner
(collectively “the Parties”) filed a Joint Motion to Terminate this proceeding,
pursuant to a settlement. See Paper 11 (“Joint Motion”). Along with the
Joint Motion, the Parties filed a copy of an agreement (Ex. 1051,
“Agreement”), as well as a Joint Motion requesting that the Agreement be
treated as business confidential information and kept separate from the file
of U.S. Patent No. 7,174,014 B2 (“the ’014 patent”). See Paper 12 (“Joint
Request”)
In the Joint Motion, the Parties represent that they have reached a
“settlement agreement that fully resolves this matter,” and that they jointly
seek termination of this proceeding. Joint Motion 1–2. The Parties also
represent that the filed copy of the Agreement is a “true and accurate copy.”
Id. at 2. The Agreement states that it “constitutes the entire agreement
between the Parties.” Agreement 5.
This proceeding is at an early stage, and we have not yet decided
whether to institute a trial in the proceeding. In view of the early stage of
the proceeding and the settlement between the Parties, we determine that
good cause exists to dismiss the petition and terminate the proceeding with
respect to the Parties, which include all of the parties in this proceeding.
In the Joint Request, the Parties request that the Agreement be treated
as business confidential information and be kept separate from the file of the
’014 patent. Joint Request i. After reviewing the Agreement between the
Parties, we find that the Agreement contains confidential business
information regarding the terms of settlement. We determine good cause
IPR2021-00078
Patent 7,174,014 B2

3
exists to treat the Agreement between the Parties as business confidential
information pursuant to 37 C.F.R. § 42.74(c).
This Order does not constitute a final written decision pursuant to
35 U.S.C. § 318(a).
II. ORDER
Accordingly, it is:
ORDERED that the Joint Motion to Terminate (Paper 11) is granted,
and the Petition in IPR2021-00078 is dismissed and the proceeding is
terminated with respect to the Parties; and
FURTHER ORDERED that the Joint Request (Paper 12) is granted,
and the Agreement (Ex. 1051) shall be kept separate from the file of the
’014 patent, and made available only to Federal Government agencies on
written request, or to any person on a showing of good cause, pursuant to
37 C.F.R. § 42.74(c).
FOR PETITIONER:

Don Daybell
ORRICK, HERRINGTON & SUTCLIFFE, LLP
D2DPTABDocket@orrick.com
PTABDocketJ3B3@orrick.com
Oracle-Teleputers_OHS@orrick.com

FOR PATENT OWNER:

Raymond W. Mort, III
THE MORT LAW FIRM, PLLC
raymort@austinlaw.com

Cabrach Connor
CONNOR KUDLAC LEE PLLC
cab@connorkudlaclee.com