CBM2020-00005 (P.T.A.B. Oct. 13, 2020)

Unisone Strategic IP, Inc.

Patent Trials and Appeals BoardOct 13, 2020

CBM2020-00005 (P.T.A.B. Oct. 13, 2020)

Trial@uspto.gov 571-272-7822 Paper No. 28 Date Entered: October 13, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ LIFE TECHNOLOGIES CORPORATION, Petitioner, v. UNISONE STRATEGIC IP, INC., Patent Owner. ____________ CBM2020-00001 CBM2020-00005 Patent 6,996,538 B21 ____________ Before BRIAN J. McNAMARA, HYUN J. JUNG, and NEIL T. POWELL Administrative Patent Judges. McNAMARA, Administrative Patent Judge. TERMINATION Due to Settlement After institution of Trial 35 U.S.C. § 327; 37 C.F.R. § 42.74 1 This order is to be filed in each case. The parties are not authorized to use this style heading in any subsequent papers. CBM2020-00001, CBM2020-00005 Patent 6,996,538 B2 2 By e-mail notification to the Board, the parties have requested that CBM2020-00001 and CBM2020-00005 (“the Subject Proceedings”) be terminated pursuant to a settlement. On October 5, 2020, in a responsive e- mail, the Board authorized the parties to file a Joint Motion To Terminate and a Joint Request that the Settlement Agreement Be Treated As Business Confidential Information under 37 C.F.R. 42.74(c). On October 8, 2020 in each of the Subject Proceedings the parties filed a Joint Motion to Terminate CBM and a Joint Request To Treat Settlement Agreement As Business Confidential Information Pursuant to 35 U.S.C. § 327(b).2 The parties also filed a copy of a written settlement agreement. Ex. 2010 in each of the Subject Proceedings. In each of the Subject Proceedings, a decision by the Board to institute a trial was entered on April 28, 2020 and a Patent Owner Response has been filed. Notwithstanding that the proceeding has moved beyond the preliminary stage, the parities have explained adequately the reason termination is appropriate. The parties have not identified any other related matters and have certified that there are no collateral agreements or understandings made in connection with, or in contemplation of, the termination of the Subject Proceedings. Under these circumstances, the Board determines that it is appropriate to terminate the Subject Proceedings without rendering a final written decision. 37 C.F.R. § 42.72. It is, therefore, 2 Papers 28 and 29, respectively, in CBM2020-0001; papers 26 and 27, respectively in CBM2020-0005. CBM2020-00001, CBM2020-00005 Patent 6,996,538 B2 3 ORDERED that the Joint Motion To Terminate each of the Subject Proceeding is GRANTED and the Subject Proceedings are hereby terminated; and FURTHER ORDERED that the parties’ Joint Request To Treat Settlement Agreement As Business Confidential Information Pursuant to 35 U.S.C. § 327(b) is GRANTED. PETITIONER: Michael L. Kiklis Matthew D. Zapadka Shu Chen BASS BERRY & SIMS PLC mkiklis@bassberry.com matt.zapadka@bassberry.com shu.chen@bassberry.com PATENT OWNER: Gregory A. Sargenti MURCHISON & CUMMING, LLP gsargenti@murchisonlaw.com David L. McCombs Gregory P. Huh HAYNES AND BOONE, LLP david.mccombs.ipr@haynesboone.com gregory.huh.ipr@haynesboone.com