MobileIron, Inc.

Patent Trials and Appeals Board

Mar 19, 2021

IPR2020-01604 (P.T.A.B. Mar. 19, 2021)

Trials@uspto.gov Paper No. 16
571-272-7822 Entered: March 19, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

BLACKBERRY LIMITED,
Petitioner,

v.

MOBILEIRON, INC.,
Patent Owner.
____________

IPR2020-01604
Patent 8,359,016 B2
____________

Before JENNIFER MEYER CHAGNON, JOHN D. HAMANN, and
JASON M. REPKO, Administrative Patent Judges.

HAMANN, Administrative Patent Judge.
DECISION
Settlement Prior to Institution of Trial
37 C.F.R. § 42.74

IPR2020-01604
Patent 8,359,016 B2

2

I. INTRODUCTION
With the Board’s authorization, the parties filed a Joint Motion to
Terminate Proceeding. Paper 14 (“Mot.”). Along with the Joint Motion, the
parties filed a copy of a “Confidential Settlement Agreement” they describe
as “a true copy of settlement agreement entered between the Parties”
(Ex. 1037 (“Settlement Agreement”)1). Mot. 1. The parties also filed a
Joint Request to Keep Agreement Business Confidential and Separate Under
37 C.F.R. § 42.74(c). Paper 15.
II. DISCUSSION
In the Joint Motion, the parties represent that the Settlement
Agreement “is the only agreement or understanding between Petitioner and
Patent Owner made in connection with, or in contemplation of terminating
this proceeding.” Mot. 2. The parties also represent the “settlement
agreement was entered into in contemplation of terminating this
proceeding.” Id. at 1–2.
This proceeding is still in its preliminary stages. We have not entered
a decision on whether to institute inter partes review in the proceeding. In
view of the early stage of this proceeding and the settlement between the
parties, we determine that good cause exists to terminate these proceedings
with respect to the parties.

1 The Settlement Agreement is between Blackberry Limited and Ivanti, Inc.
As noted in Patent Owner’s updated Mandatory Notices, filed on December
28, 2020, the “patent owner and real party-in-interest is MobileIron, Inc.
Ivanti, Inc. publicly announced that it has acquired Patent Owner.” Paper
10, 1.
IPR2020-01604
Patent 8,359,016 B2

3

We also have reviewed the Settlement Agreement, and we determine
that the Settlement Agreement contains business confidential information
regarding the terms of the settlement, and that good cause exists to treat the
Settlement Agreement as business confidential information under 37 C.F.R.
§ 42.74(c).
This Order does not constitute a final written decision pursuant to
35 U.S.C. § 318(a).
III. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the parties’ Joint Request (Paper 15) to treat the
Settlement Agreement (Exhibit 1037) as business confidential information
under 37 C.F.R. § 42.74(c) is granted, and the Settlement Agreement shall
be kept separate from the files of Patent 8,359,016 B2, 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); and
FURTHER ORDERED that the parties’ Joint Motion to Terminate
Proceeding (Paper 14) is granted, the Petition in IPR2020-01604 is
dismissed, and the proceeding is terminated.

IPR2020-01604
Patent 8,359,016 B2

4

PETITIONER:

Kyle E. Conklin
Michael D. Specht
Daniel S. Block
Steven M. Pappas
STERNE, KESSLER, GOLDSTEIN & FOX
kconklin-PTAB@sternekessler.com
mspechtPTAB@sternekessler.com
dblock-PTAB@sternekessler.com
spappasPTAB@sternekessler.com

PATENT OWNER:

Parrish Freeman
Eric Maschoff
John Gadd
MASCHOFF BRENNAN
pfreeman@mabr.com
emaschoff@mabr.com
jgadd@mabr.com