Digital Retail Apps, Inc.

Patent Trials and Appeals Board

Apr 19, 2021

IPR2020-00347 (P.T.A.B. Apr. 19, 2021)

Trials@uspto.gov Paper 38
571-272-7822 Date: April 19, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

H-E-B, LP,
Petitioner,
v.
DIGITAL RETAIL APPS, INC.,
Patent Owner.

IPR2020-00347
Patent 9,934,506 B2

Before DAVID C. MCKONE, JOHN F. HORVATH, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
TERMINATION
Due to Settlement After Institution of Trial
35 U.S.C. § 317; 37 C.F.R. § 42.74
IPR2020-00347
Patent 9,934,506 B2

2
H-E-B, LP (“Petitioner”) and Digital Retail Apps, Inc. (“Patent
Owner”) jointly request that the above-referenced inter partes review
proceeding be terminated pursuant to the parties’ agreement. On April 8,
2021, with our authorization, the parties filed a Joint Motion to Terminate
(Paper 33), a copy of a Settlement and Patent License Agreement (Ex. 2010),
and a joint Request to Keep Separate (Paper 34).
In the Motion to Terminate, the parties make the following
representations: (1) that “[t]he Parties have settled with respect to the
challenged patent and have reached agreement to terminate this IPR”; (2)
that “[t]he underlying litigation between the Parties, Digital Retail Apps, Inc.
v. H E B, LP, Case No. 6:19-cv-00167-ADA, in the Western District of
Texas, was dismissed on April 7, 2021”; (3) that “[n]o litigation or
proceeding involving the subject patent is contemplated in the foreseeable
future”; (4) that Exhibit 2010 is “a true and correct copy” of the settlement
agreement; and (5) that “there are no collateral agreements or
understandings made in connection with, or in contemplation of, the
termination of the inter partes review.” Paper 33, 2–3.
“The Board expects that a proceeding will terminate after the filing of
a settlement agreement, unless the Board has already decided the merits of
the proceeding.” Patent Trial and Appeal Board Consolidated Trial Practice
Guide 86 (PTAB Nov. 19), https://go.usa.gov/xpvPF. We instituted trial in
this proceeding on July 6, 2020. Paper 17. Although the parties have
completed their briefing, the parties notified the Board of their settlement
before the scheduled oral hearing. See Paper 37 (hearing transcript).
Given the parties’ joint request, we must terminate the proceeding
with respect to Petitioner. See 35 U.S.C. § 317(a) (“An inter partes review
IPR2020-00347
Patent 9,934,506 B2

3
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.”). In addition, “[i]f no petitioner remains in the inter
partes review, the Office may terminate the review or proceed to a final
written decision.” Id. We have not yet reached a decision on the merits and
the parties represent that the district court litigation between the parties has
been dismissed and no further litigation or proceeding is contemplated for
the ’506 patent. Under these circumstances, we determine that it is
appropriate to terminate this proceeding without rendering a final written
decision.
With respect to the joint Request to Keep Separate (Paper 34), we
have reviewed the Settlement and Patent License Agreement (Ex. 2010) and
find that it contains confidential business information regarding the terms of
the parties’ agreement. We determine that good cause exists to treat the
Settlement and Patent License Agreement as business confidential
information pursuant to 37 C.F.R. § 42.74(c).
ORDER
Accordingly, it is
ORDERED that the joint Request to Keep Separate (Paper 34) is
granted, and that the settlement agreement be treated as business
confidential information and be kept separate from the files of the above-
identified proceedings and from the files of the ’506 patent under the
provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c);
IPR2020-00347
Patent 9,934,506 B2

4
FURTHER ORDERED that the Joint Motion to Terminate (Paper 33)
the above-identified proceeding is granted; and
FURTHER ORDERED that this proceeding is terminated with respect
to both Petitioner and Patent Owner pursuant to 35 U.S.C. § 317(a) and
37 C.F.R. § 42.72.

IPR2020-00347
Patent 9,934,506 B2

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For PETITIONER:
Thomas Millikan
Babak Tehranchi
Joseph Reid
PERKINS COIE LLP
millikan-ptab@perkinscoie.com
tehranchi-ptab@perkinscoie.com
reid-ptab@perkinscoie.com

For PATENT OWNER:
Robert Brunelli
Matthew Holohan
SHERIDAN ROSS P.C.
rbrunelli@sheridanross.com
mholohan@sheridanross.com