`To:
`Cc:
`
`Subject:
`
`Date:
`Attachments:
`
`Importance:
`
`Jason Eisenberg
`Trials
`fmeeker@bannerwitcoff.com; bwright@bannerwitcoff.com; wporter@bannerwitcoff.com;
`jfleming@bannerwitcoff.com; jcurry@bannerwitcoff.com; spatel@bannerwitcoff.com; bsilver@bannerwitcoff.com;
`skelly@bannerwitcoff.com; ksigmon@bannerwitcoff.com; ckronenthal@bannerwitcoff.com;
`jhutchins@bannerwitcoff.com; amu@bannerwitcoff.com; risraelson@bannerwitcoff.com;
`bingvoldstad@bannerwitcoff.com; cmiller@bannerwitcoff.com; bemfinger@bannerwitcoff.com;
`ComcastIPRService@bannerwitcoff.com; mcuviello@bannerwitcoff.com; jbodner@bannerwitcoff.com;
`cmckee@bannerwitcoff.com; tpratt@bannerwitcoff.com; ezelepugas@bannerwitcoff.com;
`adike@bannerwitcoff.com; PTAB Account; Joel Greenberg; Brett McCone; Will Milliken; Michael Joffre; Kristina
`Caggiano Kelly; Rob Sokohl
`Request for Authorization to file Motion to Terminate, Vacate, and Keep Settlement Agreement Confidential--
`IPR2019-00224, -00231, -00237, -00239, -00281, -00290, -00292, -00299, -00555; IPR2017-00950, -00951,
`-00952, 01048, 01049, 01050
`Tuesday, September 14, 2021 9:53:57 AM
`image001.png
`image002.png
`High
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Board Paralegals
`
`The parties have settled all disputes in the PTAB, district court, and ITC
`and have executed a settlement agreement for the above-noted
`proceedings.
`
`All of the above-noted proceedings are on remand from the Federal
`Circuit for Director Rehearing, so there is no current final agency
`decision in these cases.
`
`Patent Owner filed a Director Rehearing Request in IPR2019-00224,
`-00231, -00237, -00239, -00281, -00290, -00292, -00299, -00555 on
`September 2, 2021, and emailed
`Director_PTABDecision_Review@uspto.gov and Trials@uspto.gov.
`
`Patent Owner intends to file a Director Rehearing Request in IPR2017-
`00950, -00951, -00952, 01048, 01049, 01050 by October 1, 2021, and
`email the same addresses.
`
`
`
`Patent Owner requests authorization from the Board to file three
`documents in these proceedings:
`
`
`1. A Motion to Vacate the Final Written Decision and Institution
`Decision based on settlement between the parties
`2. A Motion to Terminate the inter partes review proceedings based
`on settlement between the parties
`3. A Motion to keep the settlement agreement confidential
`
`
`Patent Owner understands the requirements for each of these motions
`and will comply with all Board rules and procedures for these filings.
`
`Petitioner takes no position.
`
`Please let us know if Patent Owner is authorized to file these motions,
`or if a Board call is desired to discuss the motions.
`
`Thank you.
`Best regards,
`Jason Eisenberg, for Patent Owner
`
`
`
` Jason Eisenberg
`Director
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`1100 New York Avenue, NW, Washington, DC 20005
`Email: jasone@sternekessler.com
`Direct: 202.772.8645
`Client Relationship Liaison: LaTishia Tillman
`Main: 202.371.2600 Direct: 202.772.8728
`
`
`
`
`Notice: The information in this electronic transmission (including any attachments)
`may contain confidential or legally privileged information and is intended solely for
`the individual(s) or entity(ies) named above. If you are not an intended recipient or
`an authorized agent, you are hereby notified that reading, distributing, or otherwise
`disseminating or copying, or taking any action based on the contents of this
`
`
`
`transmission is strictly prohibited. Any unauthorized interception of this
`transmission is illegal under the law. If you have received this transmission in error,
`please immediately notify the sender by return email and then destroy all copies of
`the transmission.
`
`
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