Intel Corporationv.Zond LLC

Patent Trial and Appeal Board

Sep 15, 2014

10249202 (P.T.A.B. Sep. 15, 2014)

Trials@uspto.gov
571-272-7822 Entered: September 15, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

INTEL CORPORATION,
Petitioner,

v.

ZOND, LLC,
Patent Owner.
____________
Cases IPR2014-00598
IPR2014-00686
IPR2014-00765
IPR2014-00820
IPR2014-00913
Patent 6,805,779 B2
1

____________

Before KEVIN F. TURNER, DEBRA K. STEPHENS, JONI Y. CHANG,
SUSAN L.C. MITCHELL, and JENNIFER M. MEYER,
Administrative Patent Judges.

CHANG, Administrative Patent Judge.

JUDGMENT
Termination of Proceeding before Institution
37 C.F.R. § 42.73

1
This Decision addresses the same issue in the above-identified cases.
Therefore, we issue one Decision to be entered in all cases. The parties may
not use this style of filing in subsequent papers, without prior authorization.
IPR2014-00598, IPR2014-00686, IPR2014-00765, IPR2014-00820,
IPR2014-00913 (Patent 6,805,779 B2)
2

On September 12, 2014, Petitioner, Intel Corporation (“Intel”), and
Patent Owner, Zond, LLC (“Zond”), filed a Joint Motion to Terminate in
each of the above-identified proceedings, involving of U.S. Patent
No. 6,805,779 (“the ’779 patent”). Paper 8.
2
The parties also filed a true
copy of their Written Settlement Agreement, made in connection with the
termination of the proceedings, in accordance with 35 U.S.C. § 317(b) and
37 C.F.R. § 42.74(b). Ex. 1013.
3
Additionally, the parties submitted a Joint
Request to have their Written Settlement Agreement treated as confidential
business information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
Paper 8, 9. For the reasons set forth below, the Joint Motions to Terminate
and the Joint Request are granted.
In their Joint Motions to Terminate, the parties indicate that they have
settled all of their disputes involving the following patents: U.S. Patent Nos.
6,805,779 B2, 6,806,652 B1, 6,853,142 B2, 7,147,759 B2, 7,604,716 B2,
7,808,184 B2, and 7,811,421 B2. Id. at 1. In particular, the parties have
agreed to settle and dismiss their related district court litigation, Zond, LLC
v. Intel Corp., No.1:13-cv-11570-RGS (D. Mass.). Id. More importantly,
the parties also have submitted Motions to Terminate all other inter partes
reviews requested by Intel for the aforementioned patents. The proceedings,
involving those patents, are listed in the Appendix of this Decision.

2
For the purpose of clarity and expediency, we treat IPR2014-00598 as
representative, and all citations are to IPR2014-00598 unless otherwise
noted.
3
As authorized by the Board’s previous Order, the parties filed one copy of
their Written Settlement Agreement in IPR2014-00598 for all the above-
identified proceedings.
IPR2014-00598, IPR2014-00686, IPR2014-00765, IPR2014-00820,
IPR2014-00913 (Patent 6,805,779 B2)
3

Intel filed a Petition and, in response, Zond filed a Preliminary
Response in each of the above-identified proceedings. However, we have
not determined yet the merits of the proceedings—specifically, whether an
inter partes review of the ’779 patent should be instituted.
Zond urges the Board to terminate the above-identified proceedings
with respect to both parties, because concluding the proceedings, at this
early stage, would promote efficiency and reduce cost, consistent with the
legislative intent. Paper 8, 5–8 (citing 154 Cong. Rec. S9987 (daily ed.
Sept. 27, 2008) (statement of Sen. Kyl); 157 Cong. Rec. S1376 (daily ed.
Mar. 8, 2001) (statement of Sen. Kyl)). Zond contends that terminating the
proceedings upon settlement would “establish a more efficient and
streamlined patent system that, inter alia, limits unnecessary and
counterproductive litigation cost,” and “foster[] an environment that
promotes settlements, thereby creating a timely, cost-effective alternative to
litigation.” Id. at 5–6.
Generally, the Board expects that a proceeding will terminate after the
filing of a settlement agreement. See, e.g., Office Patent Trial Practice
Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). As no trial has been
instituted based on Intel’s Petitions involving the ’779 patent, each of the
proceedings is in the preliminary proceeding stage.
4
Upon consideration of
the facts before us, we determine that it is appropriate to terminate the
above-identified proceedings as to both parties, and enter judgment.

4
A preliminary proceeding begins with the filing of a petition for instituting
a trial and ends with a written decision as to whether a trial will be instituted.
37 C.F.R. § 42.2.
IPR2014-00598, IPR2014-00686, IPR2014-00765, IPR2014-00820,
IPR2014-00913 (Patent 6,805,779 B2)
4

For the foregoing reasons, it is:
ORDERED that the Joint Motions to Terminate the above-identified
inter partes reviews are granted;
FURTHER ORDERED that the above-identified proceedings are
terminated as to all parties—namely, Intel and Zond; and
FURTHER ORDERED that the parties’ Joint Request that their
Written Settlement Agreement be treated as business confidential
information kept separate from the patent file, 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), is granted.

IPR2014-00598, IPR2014-00686, IPR2014-00765, IPR2014-00820,
IPR2014-00913 (Patent 6,805,779 B2)
5

For PETITIONER:
Richard Goldenberg
Richard.Goldenberg@wilmerhale.com

David L. Cavanaugh
David.Cavanaugh@wilmerhale.com

For PATENT OWNER:
Gregory J. Gonsalves
gonsalves@gonsalveslawfirm.com
Bruce J. Barker
bbarker@chsblaw.com

IPR2014-00598, IPR2014-00686, IPR2014-00765, IPR2014-00820,
IPR2014-00913 (Patent 6,805,779 B2)
6

APPENDIX

U.S. Patent No. 6,805,779 B2
IPR2014-00598, IPR2014-00686, IPR2014-00765, IPR2014-00820,
IPR2014-00913

U.S. Patent No. 6,806,652 B1
IPR2014-00843, IPR2014-00923, IPR2014-00945

U.S. Patent No. 6,853,142 B2
IPR2014-00494, IPR2014-00495, IPR2014-00496, IPR2014-00497,
IPR2014-00498

U.S. Patent No. 7,147,759 B2
IPR2014-00443, IPR2014-00444, IPR2014-00445, IPR2014-00446,
IPR2014-00447

U.S. Patent No. 7,604,716 B2
IPR2014-00520, IPR2014-00521, IPR2014-00522, IPR2014-00523

U.S. Patent No. 7,808,184 B2
IPR2014-00455, IPR2014-00456

U.S. Patent No. 7,811,421 B2
IPR2014-00468, IPR2014-00470, IPR2014-00473