CallMiner, Inc.

Patent Trials and Appeals Board

Aug 25, 2021

IPR2020-00578 (P.T.A.B. Aug. 25, 2021)

Trials@uspto.gov Paper 35
571-272-7822 Entered: August 25, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

NICE LTD.,
Petitioner,

v.

CALLMINDER, INC.,
Patent Owner.
____________

IPR2020-00578 (Patent 7,346,509 B2)
IPR2020-00616 (Patent 8,583,434 B2)1

Before BRYAN F. MOORE, STACEY G. WHITE, and JOHN R. KENNY,
Administrative Patent Judges.

WHITE, Administrative Patent Judge.

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

1 This Order applies to each of the listed cases. Given the similarities of
issues, we issue one Order to be docketed in each case. The parties,
however, are not authorized to use this filing style in subsequent papers.
IPR2020-00578 (Patent 7,346,509 B2)
IPR2020-00616 (Patent 8,583,434 B2)

2
I. INTRODUCTION
With the Board’s authorization, Petitioner and Patent Owner
(collectively referred to as “the Parties”) filed Joint Motions to
Terminate the above-identified proceedings due to settlement. Paper 322
(“Joint Motion”). In support of the Joint Motion, the Parties filed a copy of
a Settlement Agreement (Ex. 2010 (“Settlement Agreement”)) and Joint
Stipulation of Dismissal (Ex. 2009), as well as a Joint Request to File
Settlement Agreement as Business Confidential Information pursuant to 35
U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (Paper 33 (“Joint Request”)).
II. DISCUSSION
Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
this chapter shall be terminated with respect to any petitioner upon the joint
request of the petitioner and the patent owner, unless the Office has decided
the merits of the proceeding before the request for termination is
filed.” Section 35 U.S.C. § 317(a) also provides that if no petitioner remains
in the inter partes review, the Office may terminate the review.
In the Joint Motion, the Parties represent that they have reached an
agreement that resolves the co-pending district court litigation as well as
IPR2020-00578 and IPR2020-00616. Joint Motion 1–2. The Parties further
represent that the filed copy of the Settlement Agreement is a “true and
accurate copy,” and “that there are no other agreements, oral or written,

2 The parties made substainally similar filings in IPR2020-00578 and
IPR2020-00616. See IPR2020-00616, Paper 32 (Joint Motion), Paper 33
(Joint Request), Ex. 2010 (Settlement Agreement), Ex. 2009 (Joint
Stipulation). For ease of reference, we will be referring to the papers and
exhibits filed in the 578 proceeding.
IPR2020-00578 (Patent 7,346,509 B2)
IPR2020-00616 (Patent 8,583,434 B2)

3
between the parties made in connection with, or in contemplation of, the
termination of the proceeding.” Id. at 2.
We instituted a trial in the above-identified proceeding in
September 2020. Paper 12. We have not yet decided the merits of
the proceeding, and a final written decision has not been entered.
Notwithstanding that the proceeding has moved beyond the preliminary
stage, the Parties have adequately shown that termination of the proceeding
is appropriate. Under these circumstances, we determine that good cause
exists to terminate the proceeding with respect to the Parties.
In the Joint Request, the Parties request that the Settlement Agreement
be treated as business confidential information and be kept separate from the
file of the patent involved in this inter partes proceeding. Joint Request 1.
After reviewing the Settlement Agreement between Petitioner and Patent
Owner, we find that the Settlement Agreement contains confidential
business information regarding the terms of settlement. We determine that
good cause exists to treat the Settlement 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).
This Order does not constitute a final written decision pursuant to 35
U.S.C. § 318(a).
III. ORDER
Accordingly, for the reasons discussed above, it is:
ORDERED that the Joint Motions to Terminate are granted, and
IPR2020-00578 and IPR2020-00616 are terminated with respect to
IPR2020-00578 (Patent 7,346,509 B2)
IPR2020-00616 (Patent 8,583,434 B2)

4
Petitioner and Patent Owner pursuant to 35 U.S.C. § 317(a) and 37 C.F.R.
§ 42.72; and
FURTHER ORDERED that the Joint Request to File Settlement
Agreement as Business Confidential Information is granted, and the
Settlement Agreement shall be kept separate from the file of
Patent 8,583,434 B2, and be 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).

PETITIONER:

Jeffrey A. Berkowitz
Gerson S. Panitch
Michael V. Young
Christopher C. Johns
Alexander M. Boyer
Jency J. Mathew
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, LLP
jeffrey.berkowitz@finnegan.com
gerson.panitch@finnegan.com
michael.young@finnegan.com
christopher.johns@finnegan.com
alexander.boyer@finnegan.com
jency.mathew@finnegan.com

PATENT OWNER:

James M. Heintz
Michael Van Handel
DLA PIPER LLP (US)
jim.heintz@us.dlapiper.com
michael.vanhandel@us.dlapiper.com