IPR2020-01178 (P.T.A.B. Nov. 17, 2020)

American Patents LLC

Patent Trials and Appeals BoardNov 17, 2020

IPR2020-01178 (P.T.A.B. Nov. 17, 2020)

Trials@uspto.gov Paper 11 Tel: 571-272-7822 Entered: November 17, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ COOLPAD GROUP LTD., Petitioner, v. AMERICAN PATENTS LLC, Patent Owner. ____________ IPR2020-01178 Patent 7,310,304 B2 ____________ Before JAMESON LEE, DAVID C. MCKONE, and JULIET MITCHELL DIRBA, Administrative Patent Judges. DIRBA, Administrative Patent Judge. DECISION Settlement Prior to Institution of Trial Granting Request to Keep Agreement Confidential 37 C.F.R. § 42.74 IPR2020-01178 Patent 7,310,304 B2 2 On November 9, 2020, with our authorization, Patent Owner American Patents LLC (“Patent Owner”) and Petitioner Coolpad Group Limited (“Petitioner”)1 filed a Joint Motion to Terminate Pursuant to 35 U.S.C. § 317 and 37 C.F.R. §§ 42.72 and 42.74 (Paper 9 (“Motion to Terminate”)) and confidentially filed an agreement between the Parties to resolve this proceeding (Ex. 2001 (“Resolution”)). In addition, the Parties filed a Joint Motion to File Resolution as Business Confidential Information Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74(c). Paper 10. In the Motion to Terminate, the Parties “jointly move to terminate the inter partes review of U.S. Patent No. 7,310,304, Case No. IPR2020- 01178.” Motion to Terminate 1. The Parties represent that “a true and correct copy of their resolution to terminate this proceeding as required by statute [has been filed] as Confidential Exhibit 2001.” Id. In addition, the Parties “jointly certify that, aside from this resolution, there are no other agreements or understandings, oral or written, between the parties, 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 will be dismissed, with prejudice, from district court lawsuit between the parties. Id. at 2 (citing Am. Patents LLC v. Coolpad Group Ltd., Civ. Action No. 4:19-cv-00877 (E.D. Tex.)). 1 Patent Owner and Petitioner are referred to as the “Parties.” The Petition was jointly filed by three entities—Hewlett Packard Enterprise Company (“HPE”), Aruba Networks Inc. (“Aruba”), and Petitioner—but HPE and Aruba are no longer parties to this proceeding. Paper 8 (Order Terminating HPE and Aruba). IPR2020-01178 Patent 7,310,304 B2 3 This proceeding is at an early stage, and we have not yet decided whether to institute an inter partes review. In view of the early stage of the proceeding and the Parties’ representations, we determine that good cause exists to grant the Motion to Terminate. Moreover, we have reviewed the Resolution (Ex. 2001), and find it contains confidential business information regarding the terms of the agreement between Patent Owner and Petitioner. We determine that good cause exists to treat the Resolution as business confidential information pursuant to 37 C.F.R. § 42.74(c). ORDER Accordingly, it is: ORDERED that the Motion to Terminate (Paper 9) is granted; FURTHER ORDERED that the Joint Motion to File Resolution as Business Confidential Information (Paper 10) is granted, and the Resolution (Exhibit 2001) shall be kept separate from the file of the involved U.S. Patent No. 7,310,304 B2, 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); and FURTHER ORDERED that this proceeding is terminated. IPR2020-01178 Patent 7,310,304 B2 4 PETITIONER: Craig Murray HEWLETT PACKARD ENTERPRISE COMPANY craig.murray@hpe.com David Garr COVINGTON & BURLING LLP dgarr@cov.com Jeffrey Johnson Timothy Pearce ORRICK, HERRINGTON & SUTCLIFFE LLP 3j6ptabdocket@orrick.com tvpptabdocket@orrick.com PATENT OWNER: Zachariah S. Harrington Larry D. Thompson Matthew J. Antonelli Rehan M. Safiullah ANTONELLI, HARRINGTON & THOMPSON LLP zac@ahtlawfirm.com larry@ahtlawfirm.com matt@ahtlawfirm.com rsafiullhan@ahtlawfirm.com