SENDSIG, LLC

Patent Trials and Appeals Board

Dec 8, 2020

IPR2020-00930 (P.T.A.B. Dec. 8, 2020)

Trials@uspto.gov Paper 8
Tel: 571-272-7822 Date: December 8, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

SQUARE, INC.,
Petitioner,

v.

SENDSIG, LLC,
Patent Owner.
_____________

IPR2020-00930
Patent 6,564,249 B2
____________

Before DAVID C. McKONE, JOHN P. PINKERTON, and
MELISSA A. HAAPALA, Administrative Patent Judges.

PINKERTON, Administrative Patent Judge.

TERMINATION
Due to Settlement After Institution of Trial
35 U.S.C. § 317; 37 C.F.R. § 42.74

IPR2020-00930
Patents 6,564,249 B2

2
I. INTRODUCTION
On November 18, 2020, the Decision Granting Institution of Inter
Partes Review was entered in this proceeding in which Petitioner challenges
claims 1, 2, 4, 5, 11, 12, 14, and 15 of U.S. Patent No. 6,564,249 B2 (“the
’249 patent”). Paper 5. On December 1, 2020, the parties filed a Joint
Motion to Terminate Inter Partes Review in which they jointly move to
terminate this proceeding based on an agreement between the parties. Paper
7, 1 (“Joint Motion”). Concurrently, the parties also filed their Confidential
Agreement. Ex. 1020 (“Agreement”). The parties jointly request under 37
C.F.R. § 42.74(c) that Exhibit 1020 be treated as business confidential
information. Joint Motion, 1. We authorized the filing of these papers in an
email to counsel for the parties dated November 24, 2020.
II. DISCUSSION
Under 35 U.S.C. § 317(a), “[a]n 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, unless the Office has decided
the merits of the proceeding before the request for termination is filed.”
Section 317(b) requires that any agreement between the parties, including
collateral agreements, made in connection with the termination of an inter
partes review “shall be in writing and a true copy of such agreement or
understanding shall be filed in the Office before the termination of the inter
partes review as between the parties.”
In the Joint Motion, the parties state they have “agreed to resolve their
disputes relating to United States Patent No. 6,564,249, to dismiss with
prejudice the co-pending litigation (SendSig, LLC v. Square, Inc., No. 1:19-
cv-03733-JPB) and request termination of this proceeding.” Joint Motion, 1.
IPR2020-00930
Patents 6,564,249 B2

3
The parties also represent that there “are no other agreements or
understandings, oral or written, between the parties made in connection with,
or in contemplation of, the termination of . . . [this] proceeding. Id. The
parties request that we grant the joint motion for termination because no
dispute remains between the parties regarding the ’249 patent, a final written
decision has not yet been entered, no discovery has taken place, and
termination would be consistent with with the “strong public policy
reasons favoring settlement between the parties to a proceeding.” Id. at 2
(citing Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug.
14, 2012)).
Although we recently instituted an inter partes review in this
proceeding, the proceeding has not reached due date 1 of the scheduling
order (see Paper 6, 10), and we have not yet decided the merits of, or entered
a final written decision in, this proceeding. Given the early stage of the
proceeding, the parties have shown adequately that termination is
appropriate. Under these circumstances, we determine that good cause
exists to terminate the proceeding. We further determine that the Agreement
complies with the requirements for written agreements regarding termination
set forth in 35 U.S.C. § 317(b).
With respect to the parties joint request to treat the Agreement as
business confidential information, we have reviewed the Agreement and find
that it contains confidential business information of the parties regarding the
terms of settlement. Thus, we determine that good cause exists to treat the
IPR2020-00930
Patents 6,564,249 B2

4
Agreement as business confidential information pursuant to 35 U.S.C.
§ 317(b) and 37 C.F.R. § 42.74(c).
III. CONCLUSION
For the foregoing reasons, we grant the parties’ Joint Motion to
terminate this proceeding and their joint request to treat the Agreement as
business confidential information. This determination does not constitute a
final written decision pursuant to 35 U.S.C. § 318(a).
IV. ORDER
Accordingly, it is:
ORDERED that the Joint Motion to Terminate is granted, and
IPR2020-00930 is terminated due to settlement after institution decision
with respect to Petitioner and Patent Owner pursuant to 35 U.S.C. § 317(a)
and 37 C.F.R. § 42.72; and,
FURTHER ORDERED that the parties’ joint request that the
Agreement be treated as business confidential information is granted, and
the Agreement shall be kept separate from the files of U.S. Patent No.
6,654,249 B2, and made available only to Federal Government agencies on
written request, or to any person on a showing of good cause, pursuant to 37
C.F.R. § 42.74(c).

IPR2020-00930
Patents 6,564,249 B2

5
For PETITIONER:
Sasha G. Rao
Brandon H. Stroy
MAYNARD, COOPER & GALE, LLP
srao@maynardcooper.com
bstroy@maynardcooper.com

For PATENT OWNER:
Lawrence A. Aaronson
Warren J. Thomas
MEUNIER CARLIN & CURFMAN LLC
laaronson@mcciplaw.com
wthomas@mcciplaw.com