Michael Kaufman

Patent Trials and Appeals Board

Jul 9, 2021

IPR2021-00396 (P.T.A.B. Jul. 9, 2021)

Trials@uspto.gov Paper 12
571-272-7822 Date: July 9, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

SALESFORCE.COM, INC.,
Petitioner,
v.
MICHAEL PHILIP KAUFMAN,
Patent Owner.

IPR2021-00396 (Patent 10,025,801 B2)
IPR2021-00397 (Patent 7,885,981 B2)1

Before BARBARA A. PARVIS, JENNIFER MEYER CHAGNON, and
ROBERT L. KINDER, Administrative Patent Judges.

PARVIS, Administrative Patent Judge.
DECISION
Settlement Prior to Institution of Trial
37 C.F.R. § 42.74

1 This Order applies to each of the listed proceedings. The parties are not
authorized to use this style heading for any subsequent papers.
IPR2021-00396 (Patent 10,025,801 B2)
IPR2021-00397 (Patent 7,885,981 B2)
2
I. INTRODUCTION
With the Board’s authorization, Petitioner and Patent Owner
(collectively, “the Parties”) filed a Joint Motion to terminate each of the
above-identified proceedings. Paper 102 (“Mot.”). Along with each Joint
Motion, the Parties filed a copy of a confidential Settlement Agreement
(Ex. 2003), as well as a Joint Motion to Keep Confidential and Separate the
Settlement Agreement under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c)
(Paper 11 (“Joint Request”)).
II. DISUCSSION
In the Joint Motion, the Parties “jointly request termination of the
inter partes review of U.S. Patent No. 10,025,801 (Case No. IPR2021-
00396) and U.S. Patent No. 7,885,981 (Case No. IPR2021-00397).” Mot. 1.
The Parties represent that they have “executed a settlement agreement that
resolves all of their disputes concerning U.S. Patent Nos. 10,025,801 and
7,885,981—expressly including the present IPRs.” Id. at 2. The Parties
further represent that “a true and correct copy of the Litigation Settlement
Agreement has been filed as Exhibit 2003” and “[t]here are no other
agreements between the parties.” Id. at 3.
These proceedings are still in their preliminary stages. We have not
entered a decision on whether to institute inter partes review in 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 to the parties.

2 For purposes of expediency, we cite to Papers and Exhibits filed
in IPR2021-00396. Corresponding Papers and Exhibits were filed in each of
the captioned proceedings, as shown in the Appendix.
IPR2021-00396 (Patent 10,025,801 B2)
IPR2021-00397 (Patent 7,885,981 B2)
3
We also have reviewed the Settlement Agreement, and we determine
that the Settlement Agreement contains business confidential information
regarding the terms of the settlement, and that good cause exists to treat the
Settlement Agreement as business confidential information under 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
According, it is
ORDERED that the parties’ Joint Request to treat the Settlement
Agreement as business confidential information under 37 C.F.R. § 42.74(c),
to be kept separately, is granted in each of the captioned proceedings; and
FURTHER ORDERED that the parties’ Joint Motion to Terminate is
granted in each of the captioned proceedings; the Petition in each of
IPR2021-00396 and IPR2021-00397 is dismissed; and the captioned
proceedings are terminated.
IPR2021-00396 (Patent 10,025,801 B2)
IPR2021-00397 (Patent 7,885,981 B2)
4
APPENDIX

Proceeding Joint Motion Joint Request Settlement
Agreement
IPR2021-00396 Paper 10 Paper 11 Ex. 2003
IPR2021-00397 Paper 9 Paper 10 Ex. 2003

IPR2021-00396 (Patent 10,025,801 B2)
IPR2021-00397 (Patent 7,885,981 B2)
5
For PETITIONER:
James Glass
Richard Lowry
QUINN EMANUEL URQUHART & SULLIVAN, LLP
jimglass@quinnemanuel.com
richardlowry@quinnemanuel.com

For PATENT OWNER:
Ronald Abramson
Ari Jaffess
Mord Lewis
LISTON ABRAMSON LLP
Ron.abramson@listonabramson.com
Ari.jaffess@listonabramson.com
Michael.lewis@listonabramson.com