Richman, Lawrence Download PDFPatent Trials and Appeals BoardFeb 17, 2021IPR2020-01704 (P.T.A.B. Feb. 17, 2021) Copy Citation 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 Copy with citationCopy as parenthetical citation