IPR2020-00880 (P.T.A.B. Oct. 15, 2020)

Slyce Acquisition Inc.

Patent Trials and Appeals BoardOct 15, 2020

IPR2020-00880 (P.T.A.B. Oct. 15, 2020)

Trials@uspto.gov Paper 9 571-272-7822 Date: October 15, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ SYTE – VISUAL CONCEPTION LTD., Petitioner, v. SLYCE ACQUISITION INC., Patent Owner. ____________ IPR2020-00880 Patent 9,152,624 B1 ____________ Before JENNIFER S. BISK, MICHELLE N. WORMMEESTER, and STEVEN M. AMUNDSON, Administrative Patent Judges. WORMMEESTER, Administrative Patent Judge. DECISION Settlement Prior to Institution of Trial 37 C.F.R. § 42.74 IPR2020-00880 Patent 9,152,624 B1 2 Syte – Visual Conception Ltd. filed a Petition (Paper 1) requesting inter partes review of claims 1–11 and 23–44 of U.S. Patent No. 9,152,624 B1 (Ex. 1001). Slyce Acquisition Inc. filed a Preliminary Response. Paper 6. On October 8, 2020, the parties filed a joint motion to terminate the instant proceeding pursuant to a settlement agreement. Paper 7. The parties also filed a copy of their settlement agreement made in connection with the termination of the instant proceeding. Ex. 1022. In a concurrently filed paper, the parties jointly request that the settlement agreement be treated as confidential and kept separate from the file of the involved patent under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74. Paper 8. We authorized the filing of these papers in an e-mail sent on October 8, 2020. The instant proceeding is in an early stage, and the Board has not determined whether to institute trial. The parties represent that their settlement agreement “has been made in writing” and that Exhibit 1022 is “a true and correct copy” of their settlement agreement. Paper 7, 2. The parties further represent that “[t]here are no collateral agreements or understandings made in connection with, or in contemplation of, the termination of the proceeding.” Id. In view of the foregoing, we determine that it is appropriate to dismiss the Petition and terminate the proceeding. Accordingly, it is ORDERED that the joint motion to terminate the instant proceeding is granted, and the Petition is hereby dismissed; and FURTHER ORDERED that the parties’ joint request that their settlement agreement (Ex. 1022) be treated as business confidential IPR2020-00880 Patent 9,152,624 B1 3 information and kept separate from the file of the involved patent, under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R § 42.74(c), is granted. FOR PETITIONER: Guy Yonay Milo Eadan David Loewenstein Zeev Pearl Kyle Auteri gyonay@pearlcohen.com meadan@pearlcohen.com dloewenstein@pearlcohen.com zpearl@pearlcohen.com kauteri@pearlcohen.com FOR PATENT OWNER: Christopher L. Drymalla Brian H. Tompkins Patrick Connolly Bracewell LLP chris.drymalla@bracewell.com brian.tompkins@bracewell.com patrick.connolly@bracewell.com