VMware, Inc.v.Good Technology Software, Inc.

Patent Trial and Appeal Board

Feb 20, 2015

11363583 (P.T.A.B. Feb. 20, 2015)

Trials@uspto.gov Paper 31
571–272–7822 Entered: May 6, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

VMWARE, INC.,
Petitioner,

v.

GOOD TECHNOLOGY SOFTWARE, INC.,
Patent Owner.
_______________

Case IPR2014-01324 (Patent 7,702,322 B1)
Case IPR2015-00027 (Patent 7,970,386 B2)
Case IPR2015-00030 (Patent 6,151,606)
Case IPR2015-00031 (Patent 8,012,219 B2)
_______________

Before BRYAN F. MOORE, PETER P. CHEN, and
ROBERT J. WEINSCHENK, Administrative Patent Judges.

WEINSCHENK, Administrative Patent Judge.

ORDER
1

Termination of the Proceeding
37 C.F.R. § 42.74

1
We exercise our discretion to issue one identical decision in each case
using this caption style. Unless otherwise authorized, the parties are not
permitted to use this style.
IPR2014-01324 (Patent 7,702,322 B1)
IPR2015-00027 (Patent 7,970,386 B2)
IPR2015-00030 (Patent 6,151,606)
IPR2015-00031 (Patent 8,012,219 B2)

2
I. INTRODUCTION
On May 1, 2015, the parties filed a Joint Motion to Terminate with
Request to Keep Separate pursuant to 42 C.F.R. §§ 42.5(a), 42.71(a), and
42.74. IPR2014-01324, Paper 30 (“Joint Mot.”)
2
; IPR2015-00027, Paper
14; IPR2015-00030, Paper 14; IPR2015-00031, Paper 14. In addition,
pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), the parties filed a
true copy of a Patent License and Settlement Agreement. IPR2014-01324,
Ex. 1027; IPR2015-00027, Ex. 1021; IPR2015-00030, Ex. 1034; IPR2015-
00031, Ex. 1019. The Joint Motion to Terminate with Request to Keep
Separate identifies the Patent License and Settlement Agreement as business
confidential information and requests that the agreement be kept separate
from the patent file. Joint Mot. 4–5.
II. ANALYSIS
We denied institution of an inter partes review in the above-captioned
proceedings (see, e.g., Paper 28), and Petitioner filed a request for rehearing
of that decision (see, e.g., Paper 29). Petitioner’s request for rehearing is
currently pending. The parties identify various related U.S. and non-U.S.
lawsuits and various related proceedings before the U.S. Patent and
Trademark Office (“USPTO”) involving the parties. Joint Mot. 2–3. The
parties represent that the filed agreement settles all disputes between the
parties with respect to the above-captioned proceedings. Id. at 1. Further,
the parties represent that, pursuant to the filed agreement, all related lawsuits
involving the parties have been dismissed (id. at 2–3), and that the parties

2
This decision cites to the record of the IPR2014-01324, unless otherwise
noted.
IPR2014-01324 (Patent 7,702,322 B1)
IPR2015-00027 (Patent 7,970,386 B2)
IPR2015-00030 (Patent 6,151,606)
IPR2015-00031 (Patent 8,012,219 B2)

3
are filing appropriate motions requesting termination of the related
proceedings before the USPTO (id. at 3). Under these circumstances, we
determine that good cause exists to terminate the above-captioned
proceedings without rendering a decision on Petitioner’s request for
rehearing.
The parties are reminded that confidential information that is subject
to a protective order ordinarily becomes public 45 days after denial of a
petition to institute a trial or 45 days after final judgment in a trial. Office
Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,761 (Aug. 14, 2012).
After denial of a petition to institute a trial or after final judgment in a trial, a
party may file a motion to expunge confidential information from the record
prior to the information becoming public. See 37 C.F.R. § 42.56.
III. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Joint Motion to Terminate with Request to Keep
Separate is granted;
FURTHER ORDERED that the parties’ request that the Patent
License and Settlement Agreement (IPR2014-01324, Ex. 1027; IPR2015-
00027, Ex. 1021; IPR2015-00030, Ex. 1034; IPR2015-00031, Ex. 1019) be
treated as business confidential information, to be kept separate from the
patent file, is granted;
FURTHER ORDERED that all documents designated as confidential
by the parties in the above-captioned proceedings other than the
aforementioned Patent License and Settlement Agreement will be
IPR2014-01324 (Patent 7,702,322 B1)
IPR2015-00027 (Patent 7,970,386 B2)
IPR2015-00030 (Patent 6,151,606)
IPR2015-00031 (Patent 8,012,219 B2)

4
maintained as confidential for 45 days from the date of this order, after
which those documents will become public if not expunged from the record;
FURTHER ORDERED that all other pending motions in the above-
captioned proceedings, including Petitioner’s request for rehearing, are
denied as moot; and
FURTHER ORDERED that the above-captioned proceedings are
terminated.
IPR2014-01324 (Patent 7,702,322 B1)
IPR2015-00027 (Patent 7,970,386 B2)
IPR2015-00030 (Patent 6,151,606)
IPR2015-00031 (Patent 8,012,219 B2)

5
PETITIONER:

Matthew Kreeger
Diek Van Nort
Fahd Patel
MORRISON & FOERSTER LLP
MKreeger@mofo.com
DVannort@mofo.com
FPatel@mofo.com

PATENT OWNER:

Phillip Bennett
EIP US LLP
pbennett@eip.com

Steven J. Pollinger
MCKOOL SMITH, P.C.
spollinger@McKoolSmith.com