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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________________
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`KINGSTON TECHNOLOGY COMPANY, INC.,
`Petitioner,
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`v.
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`MEMORY TECHNOLOGIES, LLC,
`Patent Owner.
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`______________________
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`Case IPR2019-00648
`Patent No. 9,063,850 B2
`______________________
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`JOINT REQUEST TO FILE SETTLEMENT AGREEMENT AS BUSINESS
`CONFIDENTIAL INFORMATION AND TO MAINTAIN SAID
`AGREEMENT SEPARATE FROM THE PUBLIC FILE PURSUANT TO
`35 U.S.C. § 317(b) AND 37 C.F.R. § 42.74(c)
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`Case No. IPR2019-00648
`Patent No. 9,063,850 B2
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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 September 5, 2019, Petitioner Kingston Technology Company,
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`Inc. and Patent Owner Memory Technologies, LLC jointly request to treat as
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`business confidential information the true copy of the Settlement Agreement
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`(Confidential Exhibit 1021) between the parties, as referenced in the parties’ Joint
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`Motion to Terminate Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74, filed
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`concurrently herewith.
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`35 U.S.C. § 317(b) provides that:
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`At the request of a party to the proceeding, the agreement
`or understanding shall be treated as business confidential
`information, shall be kept separate from the file of the
`involved patents, and shall be made available only to
`Federal Government agencies on written 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 business confidential information and be kept
`separate from the files of an involved patent or
`application. The request must be filed with
`the
`settlement. If a timely request is filed, the settlement shall
`only be available:
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`Case No. IPR2019-00648
`Patent No. 9,063,850 B2
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`(1) To a Government agency on written request to the
`Board; or
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`(2) To any other person upon written request to the
`Board to make the settlement agreement available,
`along with the fee specified in § 42.15(d) and on a
`showing of good cause.
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`The present request, which is being filed contemporaneously with the
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`Settlement Agreement, is timely and in accordance with the foregoing authority.
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`Therefore, the parties request that the Settlement Agreement (Confidential Exhibit
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`1021): (i) be treated as business confidential information, (ii) be maintained
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`separate from the publicly available file of the involved patent, and (iii) shall be
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`made available only to Federal Government agencies on written request, or to
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`persons showing good cause on written request, pursuant to 35 U.S.C. § 317(b) and
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`37 C.F.R. § 42.74(c).
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`Date: September 6, 2019
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`
`
`/Robert C.F. Pérez/
`By:
`Robert C.F. Pérez (Reg. No. 39,328)
`Lead Counsel
`Pillsbury Winthrop Shaw Pittman LLP
`1650 Tysons Boulevard, 14th Floor
`McLean, VA 22102
`Telephone: 703-770-7900
`Facsimile: 703-770-7901
`Email: robert.perez@pillsburylaw.com
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`Case No. IPR2019-00648
`Patent No. 9,063,850 B2
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`Christopher Kao
`Backup Counsel
`Brock S. Weber
`Backup Counsel
`Pillsbury Winthrop Shaw Pittman LLP
`4 Embarcadero Center, 22nd Floor
`San Francisco, CA 94111
`Telephone: 415-983-1000
`Facsimile: 415-983-1200
`Email: christopher.kao@pillsburylaw.com
`Email: brock.weber@pillsburylaw.com
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`Counsel for Petitioner
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`/Andrew Strickland/
`James D. Stein (Reg. No. 63,782)
`Lead Counsel
`Andrew Strickland (Reg. No. 67,755)
`Backup Counsel
`William B. Dyer III (Reg. No. 41,725)
`Backup Counsel
`Lee & Hayes P.C.
`1175 Peachtree Street NE
`100 Colony Square, Suite 2000
`Atlanta, GA 30361
`Phone: 404.736.1918
`james.stein@leehayes.com
`andrew.strickland@leehayes.com
`bill.dyer@leehayes.com
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`Counsel for Patent Owner
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`Dated: September 6, 2019
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`
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`By:
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`Case No. IPR2019-00648
`Patent No. 9,063,850 B2
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on September 6, 2019, a true and
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`correct copy of the foregoing JOINT REQUEST TO FILE SETTLEMENT
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`AGREEMENT AS BUSINESS CONFIDENTIAL INFORMATION AND TO
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`MAINTAIN SAID AGREEMENT SEPARATE FROM THE PUBLIC FILE
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`PURSUANT TO 35 U.S.C. § 317(b) AND 37 C.F.R. § 42.74(c) was served via
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`electronic mail on the following counsel of record for Patent Owner:
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`James D. Stein (Reg. No. 63,782)
`Lead Counsel
`Andrew Strickland (Reg. No. 67,755)
`Backup Counsel
`William B. Dyer III (Reg. No. 41,725)
`Backup Counsel
`Lee & Hayes P.C.
`1175 Peachtree Street NE
`100 Colony Square, Suite 2000
`Atlanta, GA 30361
`Phone: 404.736.1918
`james.stein@leehayes.com
`andrew.strickland@leehayes.com
`bill.dyer@leehayes.com
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`By:
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`/Robert C.F. Pérez/
`Robert C.F. Pérez (Reg. No. 39,328)
`Lead Counsel
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`Counsel for Petitioner
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`4851-9205-1108
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