IPR2021-00863 (P.T.A.B. Dec. 17, 2021)

Teradata US, Inc.

Patent Trials and Appeals BoardDec 17, 2021

IPR2021-00863 (P.T.A.B. Dec. 17, 2021)

Trials@uspto.gov Paper No. 10 571.272.7822 Entered: December 17, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ SAP SE, Petitioner, v. TERADATA US, INC., Patent Owner. ____________ IPR2021-00855 (Patent 6,763,357 B1) IPR2021-00861 (Patent 9,851,923 B2) IPR2021-00863 (Patent 9,720,623 B2)1 ____________ Before LYNNE E. PETTIGREW, BART A. GERSTENBLITH, and RUSSELL E. CASS, Administrative Patent Judges. CASS, Administrative Patent Judge. TERMINATION Due to Settlement After Institution of Trial 35 U.S.C. 317; 37 C.F.R. § 42.74 1 This Order applies to the above-listed proceedings. We exercise our discretion to issue one Order to be filed in each case. The parties are not authorized to use this style heading for any subsequent papers. IPR2021-00855 (Patent 6,763,357 B1) IPR2021-00861 (Patent 9,851,923 B2) IPR2021-00863 (Patent 9,720,623 B2) 2 With Board authorization, SAP SE (“Petitioner”) and Teradata US, Inc. (“Patent Owner”) filed Joint Motions to Terminate in the above- referenced proceedings (collectively “Joint Motions”) on December 13, 2021. Paper 92 (“Mot.”). Along with the Joint Motions, the parties filed copies of documents they describe as “a true copy” (id. at 1) of their written settlement agreement (Exs. 1021–1023, collectively “the Agreement”) that resolves all of their disputes concerning the patents at issue in these proceedings. These proceedings are still in their early stages. Petitioner filed Petitions requesting inter partes review of the patents at issue in these proceedings. Paper 2. Patent Owner filed Preliminary Responses. Paper 6. We entered decisions granting institution. Paper 7. No Patent Owner Response has yet been filed in any of these proceedings. In their Joint Motions, the parties represent that the Agreement “resolves all underlying disputes between the parties regarding” the patents at issue, including these proceedings. Mot. 1. The parties also state that “aside from the Agreement, there are no collateral agreements or understandings made in connection with, or in contemplation of, the termination of” these proceedings. Id. Under the circumstances of these cases, we determine that it is appropriate to terminate these proceedings without rendering a final written decision. See 37 C.F.R. § 42.72. 2 All citations are to IPR2021-00855 with the understanding that the other proceedings include papers and exhibits having substantially the same substantive content. IPR2021-00855 (Patent 6,763,357 B1) IPR2021-00861 (Patent 9,851,923 B2) IPR2021-00863 (Patent 9,720,623 B2) 3 Accordingly, it is ORDERED that the Joint Motions to Terminate are granted; and FURTHER ORDERED that the above-referenced proceedings are terminated. IPR2021-00855 (Patent 6,763,357 B1) IPR2021-00861 (Patent 9,851,923 B2) IPR2021-00863 (Patent 9,720,623 B2) 4 PETITIONER: Matthew W. Johnson Joseph M. Beauchamp JONES DAY mwjohnson@jonesday.com jbeauchamp@jonesday.com Andrew M. Mason Todd Siegel KLARQUIST SPARKMAN, LLP andrew.mason@klarquist.com todd.siegel@klarquist.com J. Steven Baughman PAUL, WEISS, RIFKIND, WHARTON & GARRISON LLP sbaughman@paulweiss.com PATENT OWNER: Mehran Arjomand Akira Irie Shouvik Biswas Roman Swoopes MORRISON & FOERSTER LLP marjomand@mofo.com airie@mofo.com sbiswas@mofo.com rswoopes@mofo.com David L. Fehrman DSA LEGAL SOLUTIONS PC dfehrman@dsa-legal.com