Putco, Inc.

Patent Trials and Appeals Board

Apr 14, 2021

IPR2021-00376 (P.T.A.B. Apr. 14, 2021)

Trials@uspto.gov Paper 7
571-272-7822 Date: April 14, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

CARJAMZ COM INC.,
Petitioner,

v.

PUTCO, INC.,
Patent Owner.
____________

IPR2021-00374 (Patent 9,243,796 B1),
IPR2021-00376 (Patent 9,995,473 B2)1
____________

Before THU A. DANG, JUSTIN T. ARBES, and
TERRENCE W. MCMILLIN, Administrative Patent Judges.

MCMILLIN, Administrative Patent Judge.

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

1 We exercise our discretion to issue one order to be entered in each case.
The parties are not authorized to use a caption identifying multiple cases.
IPR2021-00374 (Patent 9,243,796 B1),
IPR2021-00376 (Patent 9,995,473 B2)
2
I. INTRODUCTION
Petitioner and Patent Owner (collectively referred to as “the Parties”)
filed a Joint Motion to Terminate in each of the above-identified proceedings
due to settlement. Paper 6 (“Joint Motion”).2 In support of each Joint
Motion, the Parties filed a Settlement Agreement. Ex. 1019 (“Settlement
Agreement”). The Parties request that the Settlement Agreement be treated
as business confidential information and be kept separate from the files of
the above-identified proceedings pursuant to 35 U.S.C. § 317(b) and 37
C.F.R. § 42.74(c) in each of the above-identified proceedings. Joint Motion
2.
II. DISCUSSION
In each Joint Motion, the Parties represent that they have reached an
agreement to jointly seek termination of the above-identified inter partes
review proceedings, as set forth in the filed copies of the Settlement
Agreement. Joint Motion 1–2. The Parties further represent that the
Settlement Agreement resolves all currently pending Patent Office and
District Court proceedings between the Parties involving the above-
referenced patents. Id.
The above-identified proceedings are at an early stage, and we have
not yet decided whether to institute trial in the proceedings. In view of the
early stage of the proceedings and the settlement between the Parties, we
determine that good cause exists to dismiss the petitions and terminate the
proceedings.
The Parties also request that the Settlement Agreement be treated as

2 All citations are to the record in IPR2021-00374. The record in IPR2021-
00376 includes papers having substantially the same substantive content.
IPR2021-00374 (Patent 9,243,796 B1),
IPR2021-00376 (Patent 9,995,473 B2)
3
business confidential information and be kept separate from the files of the
respective patents involved in these inter partes proceedings. Joint Motion
2. After reviewing the Settlement Agreement between Petitioner and Patent
Owner, 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 between Petitioner and
Patent Owner as business confidential information pursuant to
35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
This paper 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 to Terminate in each of the above-
identified proceedings is granted, and IPR2021-00374 and IPR2021-00376
are terminated; and
FURTHER ORDERED that the requests to treat the Settlement
Agreement as business confidential information are granted, and the
Settlement Agreement shall be kept separate from the files of the above-
referenced patents, 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).

IPR2021-00374 (Patent 9,243,796 B1),
IPR2021-00376 (Patent 9,995,473 B2)
4
For PETITIONER:
Konrad Sherinian
Depeng Bi
THE LAW OFFICES OF KONRAD SHERINIAN, LLC
ksherinian@sherinianlaw.net
ebi@sherinianlaw.net

For PATENT OWNER:
Jonathan Kennedy
Glenn Johnson
Gregory Gunnerson
MCKEE, VOORHEES, & SEASE, PLC
Jonathan.kennedy@ipmvs.com
Glenn.johnson@ipmvs.com
Gregory.johnson@ipmvs.com