Villmer LLCDownload PDFPatent Trials and Appeals BoardJun 8, 2020IPR2020-00283 (P.T.A.B. Jun. 8, 2020) Copy Citation Trials@uspto.gov Paper 9 571-272-7822 Entered: June 8, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ FACEBOOK, INC. and FACEBOOK TECHNOLOGIES LLC, Petitioner, v. VILLMER LLC, Patent Owner. _______________ IPR2020-00283 IPR2020-00284 Patent 9,618,747 B21 _______________ Before JEFFREY S. SMITH, MELISSA A. HAAPALA, and JESSICA C. KAISER, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION Settlement Prior to Institution of Trial 37 C.F.R. § 42.74 1 This Decision addresses issues that are the same in the above-identified proceedings. We exercise our discretion to issue one Decision to be entered in each proceeding. The Parties are not authorized to use this joint heading and filing style in their papers. IPR2020-00283 IPR2020-00284 Patent 9,618,747 B2 2 Petitioner and Patent Owner (collectively referred to as “the parties”) have requested that the above-identified proceedings be terminated pursuant to a settlement. The Board authorized the parties to file a joint motion to terminate the proceedings on May 6, 2020. On May 7, 2020, pursuant to 37 C.F.R. § 42.74 and 35 U.S.C. § 317(b), the parties submitted joint motions to terminate each of the proceedings (collectively “Joint Motions”) (Paper 72) and joint requests to file a Patent License Agreement as business confidential information and to be kept separate from the patent file (collectively “Joint Requests”) (Paper 8), along with copies of the written Patent License Agreement (Ex. 1043). In the Joint Motions, the parties represent that they have reached an agreement to jointly seek termination of the above-identified proceedings, and that the filed copies of the Patent License Agreement are true and complete copies. Paper 7, 1–3. The parties further represent that their Patent License Agreement resolves all currently pending Patent Office and District Court proceedings between the parties involving the above- identified patent at issue. Id. These proceedings are at an early stage. Patent Owner has not filed a preliminary response in these proceedings, and we have not yet decided whether to institute a trial in any of these proceedings. In view of the early stage of these proceedings and the settlement between the parties, we determine that good cause exists to terminate these proceedings with respect 2 For purposes of expediency, we cite to Papers and Exhibits filed in IPR2020-00283. Similar papers and exhibits were submitted in IPR2020- 00284. IPR2020-00283 IPR2020-00284 Patent 9,618,747 B2 3 to the parties. Additionally, upon review of the Joint Requests that the Patent License Agreement be treated as business confidential information and be kept separate from the file of the patent involved in the above-identified proceedings, we determine that good cause exists to treat the Patent License Agreement between Petitioner and Patent Owner as business confidential information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Therefore, the Joint Motions and the Joint Requests are granted. This Order does not constitute a final written decision pursuant to 35 U.S.C. § 318(a). Accordingly, it is: ORDERED that the Joint Motions (IPR2020-00283, Paper 7; IPR2020-00284, Paper 7) to terminate the above-identified proceedings are granted, and that IPR2020-00283 and IPR2020-00284 are terminated with respect to both Petitioner and Patent Owner; and FURTHER ORDERED that the Joint Requests (IPR2020-00283, Paper 8; IPR2020-00284, Paper 8) that the Patent License Agreement (IPR2020-00283, Ex. 1043; IPR2020-00284, Ex. 1043) be treated as business confidential information and be kept separate from the files of the above-identified proceedings and from the file of the involved patent (U.S. Patent 9,618,747) under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), are granted. IPR2020-00283 IPR2020-00284 Patent 9,618,747 B2 4 Petitioner: Heidi L. Keefe Phillip Morton Andrew C. Mace Jennifer Volk-Fortier COOLEY LLP hkeefe@cooley.com pmorton@cooley.com amace@cooley.com jvolkfortier@cooley.com Patent Owner: Anthony G. Simon Anthony R. Friedman THE SIMON LAW FIRM, P.C. asimon@simonlawpc.com afriedman@simonlawpc.com Copy with citationCopy as parenthetical citation