Riverbed Technology, Inc.v.Parallel Networks, LLC

Patent Trial and Appeal Board

Mar 25, 2015

09640478 (P.T.A.B. Mar. 25, 2015)

Trials@uspto.gov Paper 15
571-272-7822 Entered: March 25, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

RIVERBED TECHNOLOGY, INC.
Petitioner,

v.

PARALLEL NETWORKS, LLC,
Patent Owner.
____________

Case IPR2014-01399
Patent 7,571,217 B1

Before TREVOR M. JEFFERSON, PATRICK R. SCANLON, and
HYUN J. JUNG, Administrative Patent Judges.

SCANLON, Administrative Patent Judge.

JUDGMENT
Termination of Proceeding
37 C.F.R. § 42.72
IPR2014-01399
Patent 7,571,217 B2

2
On March 3, 2015, Petitioner, Riverbed Technology, Inc.,
1
and Patent
Owner, Parallel Networks, LLC, filed a Joint Motion to Terminate Proceeding
Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.72 (Paper 13) and a Joint
Request to Keep Paper Separate as Business Confidential Information (Paper
14). The Board authorized the filing of these papers via email. The Joint
Motion to Terminate is accompanied by a copy of a settlement agreement
styled “Settlement and License Agreement” and filed as Exhibit 1014.
2
The
parties represent that Exhibit 1014 is a true copy of their agreement. Paper 13,
2.
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.” The
parties indicate that they have settled their dispute involving U.S. Patent No.
7,571,217 (“the ’217 patent”) and have agreed to terminate this inter partes
review. Paper 13, 2.
The instant proceeding is still in its early stages. Although we instituted
an inter partes review of claims 1–20 of the ’217 patent on February 27, 2015
(Paper 11), we have not held an initial conference call and Patent Owner has
not filed a Patent Owner Response. We have reviewed Exhibit 1014 and

1
Riverbed Technology, Inc. is the sole remaining Petitioner in this
proceeding. The involvement of SAP America, Inc., an original Petitioner,
was terminated previously. Paper 10.
2
This settlement agreement was entered into the Patent Review Processing
System (“PRPS”) as Exhibit 1013 despite a prior exhibit already entered as
Exhibit 1013. The Joint Motion to Terminate refers to this document as both
Exhibit 1014 (Paper 13, 2) and Exhibit 1013 (id. at 7), and the document is
also identified as Exhibit 1013 in Paper 14. For purposes of clarity, we refer
to this document as Exhibit 1014.
IPR2014-01399
Patent 7,571,217 B2

3
determine that, under the present circumstances, it is appropriate to enter
judgment and terminate the proceeding without rendering a final written
decision under 37 C.F.R. § 42.72.

In consideration of the foregoing, it is hereby:
ORDERED that the joint motion to terminate this proceeding is
granted;
FURTHER ORDERED that this proceeding is terminated;
FURTHER ORDERED that the joint request that the Settlement and
License Agreement (Ex. 1014) be treated as business confidential information
and be kept separate from the file of the involved patent pursuant to 35 U.S.C.
§ 317(b) and 37 C.F.R. § 42.74(c) is granted; and
FURTHER ORDERED that the settlement agreement styled
“Settlement and License Agreement” and filed March 3, 2015 as Exhibit 1013
be renumbered as Exhibit 1014.
IPR2014-01399
Patent 7,571,217 B2

4

PETITIONER:

Lori Gordon
lgordon-PTAB@skgf.com

Michael Lee
mlee-PTAB@skgf.com

PATENT OWNER:

Gregory Gonsalves
gonsalves@gonsalveslawfirm.com