Newpark Mats & Integrated Services LLC

Patent Trials and Appeals Board

Apr 7, 2021

IPR2020-01617 (P.T.A.B. Apr. 7, 2021)

Trials@uspto.gov Paper 13
571-272-7822 Entered: April 7, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

YAK ACCESS, LLC,
Petitioner,

v.

NEWPARK MATS & INTEGRATED SERVICES LLC,
Patent Owner
____________

IPR2020-01617
Patents 10,340,637 B1
____________

Before JAMESON LEE, DEBRA K. STEPHENS, and
MONICA S. ULLAGADDI, Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION
Settlement Prior to Institution of Trial
37 C.F.R. § 42.74

IPR2020-01617
Patent 10,340,637 B1

2
DISCUSSION
On April 5, 2021, with Board authorization, the parties filed a Joint
Motion to Terminate (Paper 11, “Motion to Terminate”), a settlement
agreement between the parties (Ex. 2013, “Settlement Agreement”), and a
request to keep the Settlement Agreement as business confidential
information and separate from the file of Patent 10,340,637 B1 (Paper 12,
“Request to Keep Settlement Agreement Confidential and Separate”).
The Motion to Terminate states: “The parties have now settled their
dispute and have reached agreement to terminate the Petition.” Paper 11, 2.
The Motion to Terminate also states: “Exhibit 2013 represents the entire
agreement or understanding between the Parties made in connection with, or
in contemplation of, the termination of this proceeding, and further, that
Exhibit 2013 is a true and accurate copy of the agreement between the
Parties that resolves the present proceeding.” Id.
Generally, 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. PTAB Consolidated Trial Practice Guide, 86
(November 2019). This proceeding is at an early stage. We have not issued
a decision on whether to institute an inter partes review. Under these
circumstances, we grant the Motion to Terminate (Paper 11) as to both
Petitioner and Patent Owner.
We also grant the Request to Keep Settlement Agreement
Confidential and Separate (Paper 12) under the terms of 37 C.F.R.
§ 42.74(c).

IPR2020-01617
Patent 10,340,637 B1

3
Order
It is
ORDERED that the Motion to Terminate (Paper 11) is granted both
as to Petitioner and Patent Owner;
FURTHER ORDERED that the Request to Keep Settlement
Agreement Confidential and Separate (Paper 12) is granted under the terms
of 37 C.F.R. § 42.74(c);
FURTHER ORDERED that the Settlement Agreement (Ex. 2013)
shall be treated as business confidential information, shall be kept separate
from the file of Patent 10,340,637 B1, and shall be made available only in
accordance with the provisions of 37 C.F.R. § 42.74(c); and
FURTHER ORDERED that this proceeding is terminated both as to
Petitioner and Patent Owner, and the Petition is dismissed.

IPR2020-01617
Patent 10,340,637 B1

4
For PETITIONER:

Robert J. Tosti
Daniel A. Palmer
BROWN RUDNICK LLP
rtosti@brownrudnick.com
dpalmer@brownrudnick.com

For PATENT OWNER:

Jennifer C. Bailey
Megan J. Redmond
ERISE IP, P.A.
Jennifer.Bailey@EriseIP.com
Megan.Redmond@EriseIP.com

David J. Smith
NEWPARK RESOURCES, INC.
jsmith7@newpark.com