`Tel: 571-272-7822
`
`Paper 20
`Entered: July 2, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CONEX UNIVERSAL LIMITED,
`Petitioner,
`v.
`RLS LLC,
`Patent Owner.
`
`Case IPR2019-00590 (Patent 9,145,992 B2)
`Case IPR2019-00615 (Patent 9,638,361 B2)
`
`
`
`
`
`
`
`
`
`Before MITCHELL G. WEATHERLY, RICHARD H. MARSCHALL, and
`JOHN D. HAMANN, Administrative Patent Judges.
`WEATHERLY, Administrative Patent Judge.
`
`TERMINATION
`Dismissing the Petitions and Terminating the Proceedings
`37 C.F.R. §§ 42.71(a), 42.72
`
`On June 21, 2019, in each of the above-referenced preliminary
`proceedings, we authorized the parties via e-mail to file a joint request to
`terminate the proceeding, to file the settlement agreement as business
`confidential information, and to file a motion to keep the agreement
`confidential and separate under 37 C.F.R. § 42.74(c). On June 24, 2019, the
`parties filed their joint motions. Papers 17 (motion to terminate), 18 (motion
`
`
`
`IPR2019-00590 (Patent 9,145,992 B2)
`IPR2019-00615 (Patent 9,638,361 B2)
`to keep settlement agreement confidential).1 The parties also filed a copy of
`a written settlement agreement. Exhibit 1027 (IPR2019-00590);
`Exhibit 1030 (IPR2019-00615).
`We have not instituted trial in either of these preliminary proceedings.
`The parties indicate that they have resolved all disputes between them
`related to the challenged patents. Paper 17, 2. Under these circumstances,
`we determine that it is appropriate to dismiss each petition and terminate
`each preliminary proceeding. See 37 C.F.R. §§ 42.71(a), 42.72. This paper
`does not constitute a final written decision pursuant to 35 U.S.C. § 318(a) in
`either of the above-referenced preliminary proceedings.
`Accordingly, it is
`ORDERED that the Joint Motion to Terminate filed in each of the
`above-referenced preliminary proceedings is granted;
`FURTHER ORDERED that the Petition for Inter Partes Review in
`each of the above-referenced preliminary proceedings is dismissed pursuant
`to 37 C.F.R. § 42.71(a);
`FURTHER ORDERED that each of the above-referenced preliminary
`proceedings is terminated pursuant to 37 C.F.R. §§ 42.71, 42.72;
`FURTHER ORDERED that the Joint Motion to Keep Confidential
`and Separate under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) in each of
`the above-referenced preliminary proceedings is granted; and
`FURTHER ORDERED that Exhibit 1027 in IPR2019-00590 and
`Exhibit 1030 in IPR2019-00615 shall be maintained separate and
`confidential as set forth in 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`
`
`1 Unless otherwise noted, references to Paper numbers and Exhibits are the
`same in both IPR2019-00590 and IPR2019-00615.
`
`2
`
`
`
`IPR2019-00590 (Patent 9,145,992 B2)
`IPR2019-00615 (Patent 9,638,361 B2)
`PETITIONER:
`Thomas A. Shewmake
`Marc C. Levy (admitted pro hac vice)
`SEED IP LAW GROUP LLP
`TomShewmake@seedip.com
`MarcL@seedip.com
`
`PATENT OWNER:
`Christopher J. Renk
`Michael J. Harris
`BANNER & WITCOFF, LTD.
`crenk@bannerwitcoff.com
`mharris@bannerwitcoff.com
`
`3
`
`
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