Proven Networks, LLC

Patent Trials and Appeals Board

Feb 11, 2022

IPR2021-00701 (P.T.A.B. Feb. 11, 2022)

Trials@uspto.gov Paper 17 Tel: 571-272-7822 Date: February 11, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ F5 NETWORKS, INC., Petitioner, v. PROVEN NETWORKS, LLC, Patent Owner. ____________ IPR2021-00701 Patent 7,877,786 B2 ____________ Before TREVOR M. JEFFERSON, PATRICK M. BOUCHER, and JOHN A. HUDALLA, Administrative Patent Judges. BOUCHER, Administrative Patent Judge. TERMINATION Due to Settlement After Institution of Trial 35 U.S.C. § 317; 37 C.F.R. § 42.74 IPR2021-00701 Patent 7,877,786 B2 2 With our authorization, the parties filed a Joint Motion to Terminate this proceeding. Paper 14. According to the parties, “[t]he dispute involving [U.S. Patent No. 7,877,786] challenged in this proceeding has been resolved and the Parties have, accordingly, reached agreement to terminate IPR2021- 00701.” Id. at 1. With their Joint Motion, the parties also filed a Joint Request to Treat Agreement as Business Confidential and to Keep Separate, along with what they represent to be “a true copy” of their settlement agreement. Paper 15; Ex. 1040. The parties expressly “certify that there are no other collateral agreements or understandings, oral or written, between the parties made in connection with, or in contemplation of, the termination of this proceeding.” Paper 14, 1-2 (citing 35 U.S.C. § 317(b)). “An 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.” 35 U.S.C. § 317(a). The filed settlement agreement appears to be a true copy, and, after reviewing the agreement, we find that it contains confidential business information regarding the terms of settlement. See Ex. 1040. The parties have not yet filed any substantive papers after the proceeding was instituted, Paper 11, and the proceeding is therefore at an early stage. We accordingly determine that it is appropriate to terminate the proceeding and to treat the filed settlement agreement as business confidential information pursuant to 35 U.S.C. § 317(b). IPR2021-00701 Patent 7,877,786 B2 3 It is ORDERED that the Joint Motion to Terminate is granted; FURTHER ORDERED that this proceeding is hereby terminated as to all parties; FURTHER ORDERED that the Joint Request to Treat Agreement as Business Confidential and to Keep Separate is granted; FURTHER ORDERED that the filed settlement agreement (Ex. 1040) be treated as business confidential information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) and also remain designated as “Parties and Board Only” in the Board’s E2E system. IPR2021-00701 Patent 7,877,786 B2 4 For PETITIONER: Lori Gordon Steven Peters David Brun KING & SPALDING LLP lgordon@kslaw.com speters@kslaw.com sbrun@kslaw.com For PATENT OWNER: Reza Mirzaie C. Jay Chung RUSS AUGUST & KABAT rmirzaie@raklaw.com jchung@raklaw.com