Facebook, Inc.

Patent Trials and Appeals Board

Jul 17, 2020

IPR2019-01598 (P.T.A.B. Jul. 17, 2020)

Trials@uspto.gov Paper 18
Tel: 571-272-7822 Entered: July 17, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

BLACKBERRY CORP.,
Petitioner
v.
FACEBOOK, INC.,
Patent Owner

Case IPR2019-01597 (Patent 6,744,759 B1)
Case IPR2019-01598 (Patent 7,302,698 B1)

Before MIRIAM L. QUINN, SCOTT C. MOORE, and JASON M. REPKO,
Administrative Patent Judges.
REPKO, Administrative Patent Judge.

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

Case IPR2019-01597 (Patent 6,744,759 B1)
Case IPR2019-01598 (Patent 7,302,698 B1)

2
Petitioner, Blackberry Corp., and Patent Owner, Facebook Inc., jointly
request to terminate the above-captioned cases. IPR2019-01597, Paper 18;
IPR2019-01598, Paper 15 (“Motions”).1 With the Motions, the parties filed
what they indicate is a true and correct copy of a written settlement
agreement. IPR2019-01597, Ex. 1023; IPR2019-01598, Ex. 1013
(“Settlement Agreement”). The parties also filed a joint request to have the
Settlement Agreement treated as business confidential information under 37
C.F.R. § 42.74(c). IPR2019-01597, Paper 19; IPR2019-01598, Paper 16.
The Board generally expects that a case “will terminate after the filing
of a settlement agreement, unless the Board has already decided the merits.”
See Patent Trial and Appeal Board Consolidated Trial Practice Guide 86
(Nov. 20, 2019), http://www.uspto.gov/TrialPracticeGuideConsolidated
(citing 35 U.S.C. §§ 317(a), 327). Here, we have not decided the merits of
these proceedings, and the parties represent that “the settlement agreement
completely resolves the dispute between the parties with respect to the”
patents challenged in each proceeding. IPR2019-01597, Paper 18, 3;
IPR2019-01598, Paper 15, 3. Under the circumstances, it is appropriate to
terminate these proceedings. See 37 C.F.R. § 42.71(a).
We have reviewed the Settlement Agreement between Petitioner and
Patent Owner. Because the Settlement Agreement contains business
confidential information about the settlement terms, it is appropriate to treat
the Settlement Agreement as business confidential information under
37 C.F.R. § 42.74(c).

1 The parties filed substantially the same motion in both cases.
Case IPR2019-01597 (Patent 6,744,759 B1)
Case IPR2019-01598 (Patent 7,302,698 B1)

3
This Order does not constitute a final written decision under 35 U.S.C.
§ 318(a).

ORDER
It is
ORDERED that the joint motions to terminate in IPR2019-01597 and
IPR2019-01598 are granted;
FURTHER ORDERED that the proceedings are terminated; and
FURTHER ORDERED that the joint requests that the Settlement
Agreement (IPR2019-01597, Ex. 1023; IPR2019-01598, Ex. 1013) be
treated as business confidential information, to be kept separate from the
patent files under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) are granted.

Case IPR2019-01597 (Patent 6,744,759 B1)
Case IPR2019-01598 (Patent 7,302,698 B1)

4

For PETITIONER:

Robert C. Mattson
MATTSON IP PLC
rmattson@mattsonip.com

Timothy Maier
Christopher Maier
MAIER & MAIER, PLLC
tjm@maierandmaier.com
cjm@maierandmaier.com

For PATENT OWNER:

Heidi L. Keefe
Andrew C. Mace
COOLEY LLP
hkeefe@cooley.com
amace@cooley.com