Villmer LLC

Patent Trials and Appeals Board

Jun 8, 2020

IPR2020-00283 (P.T.A.B. Jun. 8, 2020)

Trials@uspto.gov Paper 9
571-272-7822 Entered: June 8, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
FACEBOOK, INC. and FACEBOOK TECHNOLOGIES LLC,
Petitioner,
v.
VILLMER LLC,
Patent Owner.
_______________

IPR2020-00283
IPR2020-00284
Patent 9,618,747 B21
_______________

Before JEFFREY S. SMITH, MELISSA A. HAAPALA, and
JESSICA C. KAISER, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION
Settlement Prior to Institution of Trial
37 C.F.R. § 42.74

1 This Decision addresses issues that are the same in the above-identified
proceedings. We exercise our discretion to issue one Decision to be entered
in each proceeding. The Parties are not authorized to use this joint heading
and filing style in their papers.
IPR2020-00283
IPR2020-00284
Patent 9,618,747 B2

2

Petitioner and Patent Owner (collectively referred to as “the parties”)
have requested that the above-identified proceedings be terminated pursuant
to a settlement. The Board authorized the parties to file a joint motion to
terminate the proceedings on May 6, 2020.
On May 7, 2020, pursuant to 37 C.F.R. § 42.74 and
35 U.S.C. § 317(b), the parties submitted joint motions to terminate each of
the proceedings (collectively “Joint Motions”) (Paper 72) and joint requests
to file a Patent License Agreement as business confidential information and
to be kept separate from the patent file (collectively “Joint Requests”) (Paper
8), along with copies of the written Patent License Agreement (Ex. 1043).
In the Joint Motions, the parties represent that they have reached an
agreement to jointly seek termination of the above-identified proceedings,
and that the filed copies of the Patent License Agreement are true and
complete copies. Paper 7, 1–3. The parties further represent that their
Patent License Agreement resolves all currently pending Patent Office and
District Court proceedings between the parties involving the above-
identified patent at issue. Id.
These proceedings are at an early stage. Patent Owner has not filed a
preliminary response in these proceedings, and we have not yet decided
whether to institute a trial in any of these proceedings. In view of the early
stage of these proceedings and the settlement between the parties, we
determine that good cause exists to terminate these proceedings with respect

2 For purposes of expediency, we cite to Papers and Exhibits filed in
IPR2020-00283. Similar papers and exhibits were submitted in IPR2020-
00284.
IPR2020-00283
IPR2020-00284
Patent 9,618,747 B2

3

to the parties.
Additionally, upon review of the Joint Requests that the Patent
License Agreement be treated as business confidential information and be
kept separate from the file of the patent involved in the above-identified
proceedings, we determine that good cause exists to treat the Patent License
Agreement between Petitioner and Patent Owner as business confidential
information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
Therefore, the Joint Motions and the Joint Requests are granted.
This Order does not constitute a final written decision pursuant to
35 U.S.C. § 318(a).
Accordingly, it is:
ORDERED that the Joint Motions (IPR2020-00283, Paper 7;
IPR2020-00284, Paper 7) to terminate the above-identified proceedings are
granted, and that IPR2020-00283 and IPR2020-00284 are terminated with
respect to both Petitioner and Patent Owner; and
FURTHER ORDERED that the Joint Requests (IPR2020-00283,
Paper 8; IPR2020-00284, Paper 8) that the Patent License Agreement
(IPR2020-00283, Ex. 1043; IPR2020-00284, Ex. 1043) be treated as
business confidential information and be kept separate from the files of the
above-identified proceedings and from the file of the involved patent (U.S.
Patent 9,618,747) under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R.
§ 42.74(c), are granted.

IPR2020-00283
IPR2020-00284
Patent 9,618,747 B2

4

Petitioner:

Heidi L. Keefe
Phillip Morton
Andrew C. Mace
Jennifer Volk-Fortier
COOLEY LLP
hkeefe@cooley.com
pmorton@cooley.com
amace@cooley.com
jvolkfortier@cooley.com

Patent Owner:

Anthony G. Simon
Anthony R. Friedman
THE SIMON LAW FIRM, P.C.
asimon@simonlawpc.com
afriedman@simonlawpc.com