Richman, Lawrence

Patent Trials and Appeals Board

Feb 17, 2021

IPR2020-01704 (P.T.A.B. Feb. 17, 2021)

Trials@uspto.gov Paper No. 9
571.272.7822 Date: February 17, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

UNIFIED PATENTS, LLC,
Petitioner,

v.

RICHMAN TECHNOLOGY CORPORATION,
Patent Owner.
____________

IPR2020-01704
Patent 9,449,484 B2
____________

Before MICHAEL R. ZECHER, STEVEN M. AMUNDSON, and
MICHAEL T. CYGAN, Administrative Patent Judges.

CYGAN, Administrative Patent Judge.

DECISION
Settlement Prior to Institution of Trial
37 C.F.R. § 42.74
IPR2020-01704
Patent 9,449,484 B2

2
On January 25, 2021, Petitioner Unified Patents, LLC (“Unified”) and
Patent Owner Richman Technology Corporation (“Richman”) filed a Joint
Motion to Terminate Inter Partes Review. Paper 6 (“Joint Motion”). On
that same date, Unified and Richman filed a Joint Motion to Keep
Confidential and Separate the Settlement Agreement. Paper 7 (“Joint
Request”). We authorized these filings via email correspondence. Ex. 1033.
In the Joint Motion, the parties state that they have entered into a
written confidential settlement agreement that fully resolves the matter.
Paper 6, 1. The parties filed a copy of this settlement as Exhibit 1032. The
parties represent and certify that there are no other agreements, oral or
written, between them, and that Exhibit 1032 represents a true and accurate
copy of the settlement agreement that resolves the present proceeding.
Paper 6, 1. The parties state that there are no other pending U.S. Patent and
Trademark Office (“USPTO”) proceedings regarding the patent at issue, and
that Unified is not a party in any currently pending district court litigation.
Id. at 3–4. The parties contend that termination at this stage and for the
purposes of settlement furthers public policy objectives and conserves
USPTO resources. Id. at 2, 4.
In this proceeding, Unified has filed a petition, but we have not yet
made a determination whether to institute inter partes review. Were this
proceeding permitted to advance, the Board would determine whether to
institute inter partes review. Should inter partes review not be instituted,
the proceeding would be terminated. Should inter partes review be
instituted, we would be bound by statute to terminate such inter partes
review. 35 U.S.C. § 317(a) (“An 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”).
IPR2020-01704
Patent 9,449,484 B2

3
Under these particular circumstances, we determine that it is
appropriate to dismiss the Petition without rendering any further decision,
thereby terminating the proceeding. See 37 C.F.R. §§ 42.71(a), 42.72. We
also have reviewed the true copy of the parties’ settlement agreement, and
we determine that good cause exists to treat this settlement agreement as
business confidential information, and keep it separate from the file of the
involved patent, under 37 C.F.R. § 42.74(c).

ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Joint Motion is granted, the Petition in IPR2020-
01704 is dismissed, and the proceeding is terminated; and
FURTHER ORDERED that the Joint Request is granted, and the
Settlement Agreement (Ex. 1032) between Unified and Richman shall be
kept separate from the files of U.S. Patent No. 9,449,484 B2 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).
IPR2020-01704
Patent 9,449,484 B2

4
For PETITIONER:
Ellyar Barazesh
Roshan Mansinghani
Jessica Marks
UNIFIED PATENTS, LLC
ellyar@unifiedpatents.com
roshan@unifiedpatents.com
jessica@unifiedpatents.com

For PATENT OWNER:
Isaac Rabicoff
RABICOFF LAW LLC
isaac@rabilaw.com