IPR2020-00742 (P.T.A.B. Jun. 29, 2021)

Jenam Tech, LLC

Patent Trials and Appeals BoardJun 29, 2021

IPR2020-00742 (P.T.A.B. Jun. 29, 2021)

Trials@uspto.gov Paper 31 Tel: 571-272-7822 Date: June 29, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ UNIFIED PATENTS, LLC, Petitioner, v. JENAM TECH, LLC, Patent Owner. ____________ IPR2020-00742 Patent 9,923,995 B1 ____________ Before DANIEL J. GALLIGAN, SCOTT B. HOWARD, and JASON M. REPKO, Administrative Patent Judges. GALLIGAN, Administrative Patent Judge. TERMINATION Due to Settlement After Institution of Trial 35 U.S.C. § 317; 37 C.F.R. § 42.74 IPR2020-00742 Patent 9,923,995 B1 2 On June 28, 2021, with our authorization, Petitioner Unified Patents, LLC, and Patent Owner Jenam Tech, LLC, filed a Joint Motion to Terminate (Paper 28), a copy of their settlement agreement (Ex. 1028), and a Joint Request to Treat Settlement Agreement as Business Confidential Information (Paper 29). The parties represent that they have settled their dispute with respect to the subject patent and “represent that there are no collateral agreements or understandings made in connection with, or in contemplation of, the termination of this IPR proceeding.” Paper 28, 1. 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.” In this case, the oral argument has not yet occurred. Under these circumstances and in view of the parties’ representations, we determine that it is appropriate to terminate this inter partes review. We also determine it is appropriate to treat the settlement agreement as business confidential information. ORDER Accordingly, it is ORDERED that the Joint Motion to Terminate is granted, and the proceeding is terminated; FURTHER ORDERED that the settlement agreement (Exhibit 1028) be treated as business confidential information and be kept separate from the files of the involved U.S. Patent No. 9,923,995 B1; and IPR2020-00742 Patent 9,923,995 B1 3 FURTHER ORDERED this paper does not constitute a final written decision pursuant to 35 U.S.C. § 318(a). IPR2020-00742 Patent 9,923,995 B1 4 FOR PETITIONER: Jung Hahm jung@unifiedpatents.com Roshan Mansinghani roshan@unifiedpatents.com FOR PATENT OWNER: Timothy Devlin Td-ptab@devlinlawfirm.com