MQ Gaming LLC

Patent Trials and Appeals Board

Oct 13, 2021

IPR2020-01444 (P.T.A.B. Oct. 13, 2021)

Trials@uspto.gov Paper No. 20
571-272-7822 Entered: October 13, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

LEGO SYSTEMS, INC., LEGO BRAND RETAIL, INC., WARNER
BROS. HOME ENTERTAINMENT INC., and WB GAMES INC.,
Petitioner,

v.

MQ GAMING LLC,
Patent Owner.
____________

IPR2020-01443 (Patent 9,162,149); IPR2020-01444 (Patent 9,463,380);
IPR2020-01445 (Patent 9,770,652); IPR2020-01447 (Patent 8,475,275);
IPR2020-01448 (Patent 8,814,688)

____________

Before TIMOTHY J. GOODSON, RICHARD H. MARSCHALL, and
FREDERICK C. LANEY, Administrative Patent Judges.

PER CURIAM
TERMINATION
Due to Settlement After Institution of Trial
35 U.S.C. § 317; 37 C.F.R. § 42.74

IPR2020-01443 (Patent 9,162,149); IPR2020-01444 (Patent 9,463,380);
IPR2020-01445 (Patent 9,770,652); IPR2020-01447 (Patent 8,475,275);
IPR2020-01448 (Patent 8,814,688)

1

I. INTRODUCTION
On September 23, 2021, with Board authorization, the parties filed a
“Joint Motion to Terminate” in each of the above-captioned proceedings.
Paper 181 (“Mot.”). Along with the Joint Motion, the parties filed two2
Settlement Agreements, each of which describes itself as “the entire
agreement between the Parties.” Ex. 1018 § 14.01, Ex. 1019 § 14.01. The
Joint Motion states that the “parties have settled their dispute and agreed to
seek termination of these inter partes reviews.” Mot. 2. The Settlement
Agreements provide that the “terms and conditions of this Agreement
constitute the entire agreement between the Parties with respect to the
subject matter hereof . . . .” Ex. 1018 § 14.01, Ex. 1019 § 14.01.
The parties additionally filed in each proceeding a Joint Request to
treat their agreements as business confidential information, and to maintain
the agreements separate from the public file under 37 C.F.R. § 42.74(c).
Paper 19.
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.” The
statute also provides that if no petitioner remains in the inter partes review,
the Office may terminate the review. 35 U.S.C. § 317(a).

1 Identical motions and exhibits were filed in each case. For convenience,
we cite to the papers in IPR2020-01443.
2 One Settlement Agreement is between Patent Owner and Warner Bros. and
WB Games, and the other is between Patent Owner and the Lego companies.
IPR2020-01443 (Patent 9,162,149); IPR2020-01444 (Patent 9,463,380);
IPR2020-01445 (Patent 9,770,652); IPR2020-01447 (Patent 8,475,275);
IPR2020-01448 (Patent 8,814,688)

2

Petitioner filed its Petitions in these proceedings in August 2020, and
we issued decisions granting institution in February 2021. We have not
conducted a hearing in these proceedings, and we have not decided the
merits. Under these circumstances, we determine that termination of the
proceedings is appropriate. See Consolidated Trial Practice Guide, at 86
(Nov. 2019) (“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).
We also determine that the parties have shown that the Settlement
Agreements contain business confidential information, and that good cause
exists to treat the Settlement Agreements as business confidential
information under 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
In consideration of the foregoing, it is hereby:
ORDERED that the parties’ Joint Requests (Paper 19) to treat the
Settlement Agreements (Exhibits 1018 and 1019) as business confidential
information under 37 C.F.R. § 42.74(c) are granted, and the Settlement
Agreements shall be kept separate from the files of each patent, 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); and
IPR2020-01443 (Patent 9,162,149); IPR2020-01444 (Patent 9,463,380);
IPR2020-01445 (Patent 9,770,652); IPR2020-01447 (Patent 8,475,275);
IPR2020-01448 (Patent 8,814,688)

3

FURTHER ORDERED that the parties’ Joint Motions to Terminate
(Paper 18) are granted, and each proceeding is terminated with respect to
Petitioner and Patent Owner.

IPR2020-01443 (Patent 9,162,149); IPR2020-01444 (Patent 9,463,380);
IPR2020-01445 (Patent 9,770,652); IPR2020-01447 (Patent 8,475,275);
IPR2020-01448 (Patent 8,814,688)

4

PETITIONER:

Patrick McPherson
pdmcpherson@duanemorris.com
Manita Rawat
mrawat@duanemorris.com
Glenn Richeson
gdricheson@duanemorris.com

FOR PATENT OWNER:

Joshua Goldberg
Joshua.goldberg@finnegan.com
Elizabeth Ferrill
Elizabeth.ferrill@finnegan.com