IPR2020-00784 (P.T.A.B. Feb. 1, 2021)

Optima Direct LLC

Patent Trials and Appeals BoardFeb 1, 2021

IPR2020-00784 (P.T.A.B. Feb. 1, 2021)

Trials@uspto.gov Paper: 15 571-272-7822 Date: February 1, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD UNIFIED PATENTS, LLC, Petitioner, v. OPTIMA DIRECT LLC, Patent Owner. IPR2020-00784 Patent 8,646,060 B1 Before JONI Y. CHANG, FRANCES L. IPPOLITO, and RUSSELL E. CASS, Administrative Patent Judges. CASS, Administrative Patent Judge. TERMINATION Due to Settlement After Institution of Trial 35 U.S.C. 317; 37 C.F.R. § 42.74 IPR2020-00784 Patent 8,646,060 B1 2 With Board authorization, Unified Patents, LLC (“Petitioner”) and Optima Direct LLC (“Patent Owner”) filed a Joint Motion to Terminate on January 29, 2021. Paper 10 (“Mot.”). Along with the Joint Motion, the parties filed a copy of a document they describe as “a true and accurate copy” (id. at 1) of their written settlement agreement (Ex. 1015) that resolves all of their disputes concerning the patent at issue in this proceeding. The parties also filed a joint motion to treat the settlement agreement as business confidential information under 37 C.F.R. § 42.74(c). Paper 11. This proceeding is still in its early stages. Petitioner filed a Petition requesting an inter partes review of claims 1, 7, and 10 of U.S. Patent No. 8,646,060 B2 (Ex. 1001, “the ’060 patent”) on April 10, 2020. Paper 2. Patent Owner did not file a Preliminary Response. We entered a Decision granting institution on October 5, 2020. No Patent Owner Response has yet been filed. In their Joint Motion, the parties represent that the settlement agreement filed as Exhibit 1015 fully resolves this matter, that there are no other pending USPTO proceedings regarding the ’060 patent, and all district court litigations involving the ’060 patent have been terminated. Mot. 1, 3. The parties also state that there are no other agreements, oral or written, between the parties made in connection with, or in contemplation of, the termination of the present proceeding other than settlement agreement filed as Exhibit 1015. Id. at 1. Under the circumstances of this case, we determine that it is appropriate to dismiss the Petition without rendering any further decisions, thereby terminating this proceeding. See 37 C.F.R. § 42.71(a). We also IPR2020-00784 Patent 8,646,060 B1 3 have reviewed the settlement agreement, and we determine that the settlement agreement contains business confidential information regarding the terms of the settlement and that good cause exists to treat the settlement agreement as business confidential information under 37 C.F.R. § 42.74(c). Accordingly, it is ORDERED that the parties’ joint motion (Paper 11) to treat the parties’ settlement agreement as business confidential information is granted; FURTHER ORDERED that the settlement agreement (Exhibit 1015) shall be treated as business confidential information, kept separate from the file of the ’060 patent, and made available only to Federal Government agencies on written request to the Board, or to any person on a showing of good cause, under the provisions of 37 C.F.R. § 42.74(c); FURTHER ORDERED that the Joint Motion to Terminate (Paper 10) is granted; and FURTHER ORDERED that the Petition is dismissed, resulting in termination of this proceeding. IPR2020-00784 Patent 8,646,060 B1 4 For PETITIONER: Andrew Sommer GREENBERG TRAURIG, LLP sommera@gtlaw.com Roshan Mansinghani Jessica Marks UNIFIED PATENTS, LLC roshan@unifiedpatents.com jessica@unifiedpatents.com For PATENT OWNER: Isaac Rabicoff RABICOFF LAW LLC Isaac@rabilaw.com