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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`IGT
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`Petitioner,
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`V.
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`ARISTOCRAT TECHNOLOGIES
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`AUSTRALIA PTY LTD.
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`Patent Owner
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`Case No. IPR2016—01170
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`Patent No. 7,326,113
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`JOINT REQUEST TO FILE SETTLEMENT AGREEMENT
`AS BUSINESS CONFIDENTIAL INFORMATION AND TO MAINTAIN
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`SAID AGREEMENT SEPARATE FROM THE PUBLIC FILE PURSUANT
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`TO 35 U.S.C. § 317 (b) AND 37 C.F.R. § 42.74(c)
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`IPR2016-O1 170
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`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) and the Board’s
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`authorization of October 3, 2016, Petitioner IGT and Patent Owner Aristocrat
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`Technologies Australia Pty Ltd. jointly request to treat as business confidential
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`information the true and complete copy of their written Settlement Agreement
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`dated September 29, 2016, including Exhibits A—F thereto (“Settlement
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`Agreement”) (Confidential Exhibit 2003) between the parties, as referenced in the
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`parties’ Joint Motion to Terminate Pursuant to 35 U.S.C. § 317 and 37 C.F.R.
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`§ 42.74, filed concurrently herewith.
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`35 U.S.C. § 317(b) provides that:
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`At
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`the request of a party to the proceeding,
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`the agreement or
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`understanding shall be treated as business confidential information,
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`shall be kept separate from the file of the involved patents, and shall
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`be made available only to Federal Government agencies on written
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`request, or to any person on a showing of good cause.
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`Likewise, 37 C.F.R. § 42.74(c) provides that:
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`A party to a settlement may request that the settlement be treated as
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`business confidential information and be kept separate from the files
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`of an involved patent or application. The request must be filed with
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`the settlement. If a timely request is filed, the settlement shall only be
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`available:
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`(1) To a Government agency on written request to the Board; or
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`IPR2016-01 170
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`(2) To any other person upon written request to the Board to make the
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`settlement agreement available, along with the fee specified in
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`§ 42.l5(d) and on a showing of good cause.
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`The present request, which is being filed contemparaneously with the
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`Settlement Agreement, including Exhibits A—F thereto, is timely and in accordance
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`with the foregoing authority. Therefore, parties request that the Settlement
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`Agreement (Confidential Exhibit 2003) (i) be treated as business confidential
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`information, (ii) be maintained separate from the publicly available file of the
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`involved patent, and (iii) shall be made available only to Federal Government
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`agencies on written request, or to persons showing good cause on written request,
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`pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(C).
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`Date: October 7, 2016
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`Respectfully submitted,
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`IPR2016-01 170
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`By [Ho1by M. Abern[
`Holby M. Abern
`Registration No.: 47,372
`Adam H. Masia
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`Registration No.: 35,602
`NEAL, GERBER & EISENBERG LLP
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`Two North LaSa11e St., Suite 2200
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`Chicago, IL 60602
`(312) 269-8000
`Attorneys for Petitioner
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`
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`Jay 1. Alexander
`Registration No.: 32,678
`COVINGTON & BURLING LLP
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`One CityCenter, 850 Tenth Street, NW
`Washington, DC 20001
`(202) 662-6000
`Attorneys for Patent Owner
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`
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`CERTIFICATE OF SERVICE
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`IPR20l6—Ol 170
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`Pursuant to 37 C.F.R. § 42.6, I hereby certify that on this 7th day of October
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`2016,
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`the foregoing Joint Request To File Settlement Agreement As Business
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`Confidential Information And To Maintain Said Agreement Separate From The
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`Public File Pursuant To 35 U.S.C. § 3l7(b) And 37 C.F.R. § 42.74(c), was served
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`via email by agreement of the parties on the following counsel of record for
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`Petitioner:
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`Holby Abern (habern@ngelaw.com)
`Adam Masia (amasia@ngelaw.com)
`Neal, Gerber & Eisenberg LLP
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`Date: October 7, 2016
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`
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`Registratiori;No.: 36,253