United Services Automobile Association

Patent Trials and Appeals Board

Feb 12, 2021

IPR2020-00090 (P.T.A.B. Feb. 12, 2021)

Trials@uspto.gov Paper No. 33
571-272-7822 Entered: February 12, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

WELLS FARGO BANK, N.A.,
Petitioner,

v.

UNITED SERVICES AUTOMOBILE ASSOCIATION,
Patent Owner.
____________

IPR2020-00090 (Patent 9,177,197 B1)
IPR2020-00091 (Patent 9,177,198 B1)
IPR2020-00092 (Patent 9,569,756 B1)
IPR2020-00095 (Patent 7,974,899 B1)
IPR2020-00096 (Patent 7,962,411 B1)
IPR2020-00097 (Patent 7,885,880 B1) 1

____________

Before MICHAEL R. ZECHER, STACEY G. WHITE, and
TERRENCE W. McMILLIN, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

TERMINATION
Due to Settlement After Institution of Trial
35 U.S.C. § 317; 37 C.F.R. § 42.74

1 This Decision addresses an issue that is identical in all six proceedings. We,
therefore, exercise our discretion to issue one Decision to be filed in each
proceeding. The parties, however, may not use this style heading without seeking
prior authorization from the Board.
IPR2020-00090 (Patent 9,177,197 B1) IPR2020-00095 (Patent 7,974,899 B1)
IPR2020-00091 (Patent 9,177,198 B1) IPR2020-00096 (Patent 7,962,411 B1)
IPR2020-00092 (Patent 9,569,756 B1) IPR2020-00097 (Patent 7,885,880 B1)

2
I. DISCUSSION
On February 11, 2021, with our authorization (Paper 30), Petitioner,
Wells Fargo Banks, N.A. (“Wells Fargo”), and Patent Owner, United
Services Automobile Association (“USAA”), jointly filed the following in
each of the proceedings identified above: (1) a revised “Joint Motion to
Dismiss Proceedings” under 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74
(Paper 31, “Mot.”)2; (2) a true copy of the parties’ settlement agreement
(Ex. 2042); and (3) a renewed “Joint Request to File Agreement as Business
Confidential Information and Keep it Separate From the File of [the
Involved Patent]” under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c)
(Paper 32). For the following reasons, we grant the parties’ revised “Joint
Motion to Dismiss Proceedings,” as well as their renewed “Joint Request to
File Agreement as Business Confidential Information and Keep it Separate
From the File of [the Involved Patent],” filed in each proceeding.
On May 11, 2020, we entered a decision instituting an inter partes
review in the following three proceedings: (1) IPR2020-00090, Paper 7
(Decision Granting Institution as to claims 1–22 of U.S. Patent No.
9,177,197 B1); (2) IPR2020-00091, Paper 7 (Decision Granting Institution
as to claims 1–3 and 5–20 of U.S. Patent No. 9,177,198 B1); and
(3) IPR2020-00092, Paper 7 (Decision Granting Institution as to claims 1–7,
9–17, 19–27, 29, and 30 of U.S. Patent No. 9,569,756 B1). Less than a
month later, on June 2, 2020, we entered a decision instituting an inter
partes review in the following three proceedings: (1) IPR2020-00095,

2 Unless otherwise noted, all citations are to the papers and exhibits filed in
IPR2020-00090. Similar papers and exhibits were filed in IPR2020-00091,
IPR2020-00092, IPR2020-00095, IPR2020-00096, and IPR2020-00097.
IPR2020-00090 (Patent 9,177,197 B1) IPR2020-00095 (Patent 7,974,899 B1)
IPR2020-00091 (Patent 9,177,198 B1) IPR2020-00096 (Patent 7,962,411 B1)
IPR2020-00092 (Patent 9,569,756 B1) IPR2020-00097 (Patent 7,885,880 B1)

3
Paper 8 (Decision Granting Institution as to claims 1–4, 6–11, 13–18, 20,
and 21 of U.S. Patent No. 7,974,899 B1); (2) IPR2020-00096, Paper 8
(Decision Granting Institution as to claims 1–3, 5–10, 12–17, and 19–21 of
U.S. Patent No. 7,962,411 B1); and (3) IPR2020-00097, Paper 8 (Decision
Granting Institution as to claims 1–18 of U.S. Patent No. 7,885,880 B1).
In each of these six proceedings, although the substantive briefing was
completed, we cancelled the consolidated oral arguments for IPR2020-
00090, IPR2020-00091, and IPR2020-00092 originally scheduled on
February 10, 2021, upon learning that the parties had resolved their dispute
regarding the involved patents (see, e.g., IPR2020-00090, Paper 29, 3–4
(cancelling the consolidated oral arguments for IPR2020-00090, IPR2020-
00091, and IPR2020-00092)). We have not yet decided the merits of these
six proceedings.
In the revised “Joint Motion to Dismiss Proceedings,” the parties
indicate that they have resolved their dispute regarding the involved patents.
See Mot. 3. More specifically, the parties state that, “[p]ursuant to the terms
of the written settlement agreement, [USAA] has granted a license to [Wells
Fargo] covering” the involved patents. Id. at 1. The parties also represent
that Exhibit 2042 is “a true copy of the settlement agreement entered
between the parties and executed on February 5, 2021,” “[t]he settlement
agreement was entered into in contemplation of terminating” these six
proceedings, and the “settlement agreement is the only agreement or
understanding between [Wells Fargo] and [USAA] made in connection with,
or in contemplation, of terminating” these six proceedings. Id. at 3–4.
IPR2020-00090 (Patent 9,177,197 B1) IPR2020-00095 (Patent 7,974,899 B1)
IPR2020-00091 (Patent 9,177,198 B1) IPR2020-00096 (Patent 7,962,411 B1)
IPR2020-00092 (Patent 9,569,756 B1) IPR2020-00097 (Patent 7,885,880 B1)

4
Under these particular circumstances, we determine that it is
appropriate to terminate the trial in each proceeding without rendering a
final written decision. See 37 C.F.R. § 42.72. We also have reviewed the
true copy of the parties’ settlement agreement (Ex. 2042), and we determine
that good cause exists to treat this settlement agreement as business
confidential information, and keep it separate from the file of the involved
patent. See 35 U.S.C. § 317(b); 37 C.F.R. § 42.74(c).

II. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the parties’ renewed “Joint Request to File
Agreement as Business Confidential Information and Keep it Separate From
the File of [the Involved Patent]” filed in each proceeding under 35 U.S.C.
§ 317(b) and 37 C.F.R. § 42.74(c) are granted;
FURTHER ORDERED that the following documents shall remain
business confidential information, and shall be kept separate from the file of
the involved patent: (1) IPR2020-00090, Exhibit 2042; (2) IPR2020-00091,
Exhibit 2043; (3) IPR2020-00092, Exhibit 2042; (4) IPR2020-00095,
Exhibit 2021; (5) IPR2020-00096, Exhibit 2021; and (6) IPR2020-00097,
Exhibit 2021;
FURTHER ORDERED that the parties’ revised “Joint Motion to
Dismiss Proceedings” filed in each proceeding under 35 U.S.C 35 U.S.C.
317(a) and 37 C.F.R. § 42.74 are granted, and these proceedings are hereby
terminated; and
IPR2020-00090 (Patent 9,177,197 B1) IPR2020-00095 (Patent 7,974,899 B1)
IPR2020-00091 (Patent 9,177,198 B1) IPR2020-00096 (Patent 7,962,411 B1)
IPR2020-00092 (Patent 9,569,756 B1) IPR2020-00097 (Patent 7,885,880 B1)

5
FURTHER ORDERED that, as a result of termination, the
consolidated oral arguments for IPR2020-00095, IPR2020-00096, and
IPR2020-00097 that are scheduled on March 10, 2021, at 1:00PM ET are
cancelled.
IPR2020-00090 (Patent 9,177,197 B1) IPR2020-00095 (Patent 7,974,899 B1)
IPR2020-00091 (Patent 9,177,198 B1) IPR2020-00096 (Patent 7,962,411 B1)
IPR2020-00092 (Patent 9,569,756 B1) IPR2020-00097 (Patent 7,885,880 B1)

6
For PETITIONER:

Gregory Stark
Tyler Nasiedlak
SCHWEGMAN LUNDBERG & WOESSNER, P.A.
gstark@slwip.com
tnasiedlak@slwip.com

Louis Campbell
WINSTON & STRAWN LLP
llcampbell@winston.com

For PATENT OWNER:

Michael Fleming
Babak Redjaian
Anthony Rowles
IRELL & MANELLA LLP
mfleming@irell.com
bredjaian@irell.com
trowles@irell.com