IPR2020-01114 (P.T.A.B. Oct. 7, 2020)

American Patents LLC

Patent Trials and Appeals BoardOct 7, 2020

IPR2020-01114 (P.T.A.B. Oct. 7, 2020)

Trials@uspto.gov Paper 8 Tel: 571-272-7822 Date: October 7, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ JUNIPER NETWORKS, INC., Petitioner, v. AMERICAN PATENTS LLC, Patent Owner. ____________ IPR2020-01114 (Patent 7,310,304 B2) IPR2020-01115 (Patent 6,847,803 B1)1 ____________ Before JAMESON LEE, DAVID C. MCKONE, and JULIET MITCHELL DIRBA, Administrative Patent Judges. DIRBA, Administrative Patent Judge. DECISION Settlement Prior to Institution of Trial 37 C.F.R. § 42.74 1 This Decision is being filed in each proceeding listed in the caption. The parties, however, may not use this style of filing without prior authorization. IPR2020-01114 (Patent 7,310,304 B2); IPR2020-01115 (Patent 6,847,803 B1) 2 Juniper Networks, Inc. (“Petitioner”) and American Patents LLC (“Patent Owner”) (collectively, the “Parties”) jointly request that both of the above-referenced inter partes review proceedings be terminated pursuant to the Parties’ agreement. On October 2, 2020, with our authorization, Petitioner filed, in each proceeding, a Joint Motion to Terminate (Paper 6), a copy of a Confidential Resolution Agreement (Ex. 1022), and a Joint Motion to File Resolution as Business Confidential Information (Paper 7).2 In each Joint Motion to Terminate, the Parties jointly move to terminate the proceeding and represent that a “true and correct copy” of the Parties’ resolution to terminate the proceeding has been filed as an exhibit. Paper 6, 1 (citing Exhibit 1022). In addition, the Parties “jointly certify that, aside from this resolution [in Exhibit 1022], there are no other agreements or understandings, oral or written, between the [P]arties, including any collateral agreements or understandings, made in connection with, or in contemplation of, the termination of the present proceeding.” Id. Finally, the Parties state that “the subject patent has been dismissed, with prejudice, from the litigation between the Parties.” Id. at 1–2 & n.1 (citing Am. Patents LLC v. Juniper Networks, Inc., Civ. Action No. 4:19-cv-00879 (E.D. Tex.)). These proceedings are at an early stage, and we have not yet decided whether to institute either inter partes review. In view of the early stage of the proceedings and the Parties’ representations, we determine that good cause exists to end these proceedings. 2 In this Decision, we cite only to the papers and exhibits filed in IPR2020- 01114. Corresponding papers and exhibits were filed in IPR2020-01115 as Paper 6, Exhibit 1013, and Paper 7, respectively. IPR2020-01114 (Patent 7,310,304 B2); IPR2020-01115 (Patent 6,847,803 B1) 3 With respect to the Joint Motions to File Resolution as Business Confidential Information (Paper 7), we have reviewed the Confidential Resolution Agreement (Exhibit 1022), and find it contains confidential business information regarding the terms of the Parties’ agreement. We determine that good cause exists to treat the Confidential Resolution Agreement as business confidential information pursuant to 37 C.F.R. § 42.74(c). ORDER Accordingly, it is: ORDERED that the Joint Motions to Terminate (Paper 6) are granted; and FURTHER ORDERED that Parties’ Joint Motions to File Resolution as Confidential Business Information (Paper 7) are granted and the Confidential Resolution Agreement (IPR2020-01114, Exhibit 1022; IPR2020-01115, Exhibit 1013) shall be kept separate from the patent files, and made available only to Federal Government agencies on written request, or to any person on a showing of good cause, pursuant to 37 C.F.R. § 42.74(c); FURTHER ORDERED that both of these proceedings are terminated. IPR2020-01114 (Patent 7,310,304 B2); IPR2020-01115 (Patent 6,847,803 B1) 4 For PETITIONER: Joseph Edell Adam Allgood FISCH SIGLER LLP joe.edell.IPR@fischllp.com adam.allgood@fischllp.com For PATENT OWNER: Zachariah Harrington Larry Thompson Matthew Antonelli Rehan Safiullah ANTONELLI HARRINGTON & THOMPSON LLP zac@ahtlawfirm.com larry@ahtlawfirm.com matt@ahtlawfirm.com rehan@akingump.com