JBF Interlude 2009 Ltd

Patent Trials and Appeals Board

Oct 21, 2021

IPR2020-01663 (P.T.A.B. Oct. 21, 2021)

Trials@uspto.gov Paper 20
571-272-7822 Entered: October 21, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

QUIBI HOLDINGS, LLC,
Petitioner,

v.

JBF INTERLUDE 2009 LTD,
Patent Owner.
____________

IPR2020-01663
Patent 9,271,015 B2
____________

Before LYNNE E. PETTIGREW, KEVIN C. TROCK, and
NABEEL U. KHAN, Administrative Patent Judges.

KHAN, Administrative Patent Judge.

TERMINATION
Due to Settlement after Institution of Trial and
Granting Joint Request to Treat Settlement Agreement as
Business Confidential Information
35 U.S.C. § 317; 37 C.F.R. § 42.74

IPR2020-01663
Patent 9,271,015 B2

2

I. INTRODUCTION
Petitioner and Patent Owner (collectively “the Parties”) have
requested that the above-identified inter partes review proceeding be
terminated pursuant to a settlement. On September 16, 2021, by email, we
authorized the Parties to file a joint motion to terminate the proceeding. On
September 23, 2021, the Parties filed a Joint Motion to Terminate
Proceeding (“Joint Motion”). Paper 17. The Parties also filed a copy of a
settlement agreement (Ex. 1044, “Settlement Agreement”) and filed a joint
request that the Settlement Agreement be treated as business confidential
information and kept separate under 37 C.F.R. § 42.74(c) (Paper 18, “Joint
Request”) in the proceeding.
II. DISCUSSION
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.” It is
also provided in 35 U.S.C. § 317(a) that if no petitioner remains in the inter
partes review, the Office may terminate the review.
In the Joint Motion, the Parties represent that they have reached an
agreement to jointly seek termination of the inter partes review proceeding,
that the filed copy of the Settlement Agreement is a true copy, and “[t]here
are no collateral agreements or understandings, oral or written, made in
connection with, or in contemplation of, the termination of this inter partes
review.” Joint Motion 1.
We instituted a trial on the proceeding on April 12, 2021. Paper 10.
We have not yet decided the merits of the proceeding, and a final written
IPR2020-01663
Patent 9,271,015 B2

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decision has not been entered. Notwithstanding that the proceeding has
moved beyond the preliminary stage, the Parties have shown adequately that
termination of the proceeding is appropriate. Under these circumstances, we
determine that good cause exists to terminate the proceeding with respect to
the Parties.
The Parties also requested that the Agreement be treated as business
confidential information and be kept separate from the file of Patent
9,271,015. Joint Request 1. After reviewing the Settlement Agreement, we
find that the Settlement Agreement contains confidential business
information regarding the terms of settlement. We determine that good
cause exists to treat the Settlement Agreement as business confidential
information pursuant to 35 U.S.C. § 317(b) and 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
Accordingly, for the reasons discussed above, it is:
ORDERED that the Joint Motion is granted, and IPR2020-01663 is
terminated with respect to Petitioner and Patent Owner, pursuant to
35 U.S.C. § 317(a) and 37 C.F.R. § 42.72; and
FURTHER ORDERED that the Joint Request is granted, and the
Settlement Agreement shall be kept separate from the file of Patent
9,271,015, and made available only to Federal Government agencies on
written request, or to any person on a showing of good cause, pursuant to
35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).

IPR2020-01663
Patent 9,271,015 B2

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For PETITIONER:
Mehran Arjoman
Bryan Blumenkopf
MORRISON & FOERSTER LLP
marjomand@mofo.com
bblumen@mofo.com

For PATENT OWNER:
Sanjeet Dutta
Patrick McCarthy
GOODWIN PROCTER LLP
sdutta@goodwinlaw.com
pmccarthy@goodwinlaw.com