10065629 (P.T.A.B. Sep. 15, 2014)

Intel Corporationv.Zond, LLC

Patent Trial and Appeal BoardSep 15, 2014

10065629 (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 IPR2014-00494 IPR2014-00495 IPR2014-00496 IPR2014-00497 IPR2014-00498 Patent 6,853,142 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. IPR2014-00494, IPR2014-00495, IPR2014-00496, IPR2014-00497, IPR2014-00498 (Patent 6,853,142 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. 6,853,142 (“the ’142 patent”). Paper 7. 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. 1018. 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 7, 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 IPR2014-00494 as representative, and all citations are to IPR2014-00494 unless otherwise noted. 3 As authorized by the Board’s previous Order, the parties filed one copy of their Written Settlement Agreement in IPR2014-00494 for all the above- identified proceedings. IPR2014-00494, IPR2014-00495, IPR2014-00496, IPR2014-00497, IPR2014-00498 (Patent 6,853,142 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 ’142 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 7, 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 ’142 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. IPR2014-00494, IPR2014-00495, IPR2014-00496, IPR2014-00497, IPR2014-00498 (Patent 6,853,142 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. IPR2014-00494, IPR2014-00495, IPR2014-00496, IPR2014-00497, IPR2014-00498 (Patent 6,853,142 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 IPR2014-00494, IPR2014-00495, IPR2014-00496, IPR2014-00497, IPR2014-00498 (Patent 6,853,142 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

Intel Corporation v. Zond, LLC