Paper 12
`Trials@uspto.gov
`Entered: December 13, 2019
`Tel: 571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`ARMASPEC, INC.,
`Petitioner,
`v.
`J & K IP ASSETS, LLC,
`Patent Owner.
`
`Case IPR2019-00711
`Patent 8,800,424 B2
`__________________________
`
`Before JOSIAH C. COCKS, MICHAEL R. ZECHER, and
`JOHN D. HAMANN, Administrative Patent Judges.
`HAMANN, Administrative Patent Judge.
`
`
`
`
`TERMINATION
`Due to Settlement After Institution of Trial
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`
`
`
`
`
`
`Trials@uspto.gov
`Entered: December 13, 2019
`Tel: 571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`ARMASPEC, INC.,
`Petitioner,
`v.
`J & K IP ASSETS, LLC,
`Patent Owner.
`
`Case IPR2019-00711
`Patent 8,800,424 B2
`__________________________
`
`Before JOSIAH C. COCKS, MICHAEL R. ZECHER, and
`JOHN D. HAMANN, Administrative Patent Judges.
`HAMANN, Administrative Patent Judge.
`
`
`
`
`TERMINATION
`Due to Settlement After Institution of Trial
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`
`
`
`
`
`
`
`IPR2019-00711
`Patent 8,800,424 B2
`
`On December 3, 2019, Armaspec, Inc. (“Petitioner”) and
`J & K IP Assets, LLC (“Patent Owner”) (collectively, the “Parties”) filed a
`Joint Motion to Terminate Proceeding Pursuant to 35 U.S.C. § 317 and
`37 C.F.R. § 42.74. Paper 10 (“Motion”). Accompanying the Motion, the
`Parties filed a Settlement Agreement (Exhibit 2006, filed confidentially),
`which they represent settles their dispute both as to this proceeding and the
`related district court case captioned as J & K IP Assets, LLC v. Armaspec,
`Inc., Case No. 3:17-cv-07308-WHO (N.D. Cal.). Motion 1–2. The Parties
`also filed a Joint Request to File Settlement Agreement as Business
`Confidential Information Under 35 U.S.C. § 317 and 37 C.F.R. § 42.74.
`Paper 11 (“Request”).1
`
`Motion to Terminate
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
`
`this chapter shall be terminated with respect to any petitioner upon the joint
`request of the petitioner and the patent owner, unless the Office has decided
`the merits of the proceeding before the request for termination is filed.”
`Additionally, the Board expects that a proceeding will terminate after the
`filing of a settlement agreement. See, e.g., Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012).
`
`
`1 The Parties failed to seek authorization to file either the Motion or the
`Request, as required by our rules. 37 C.F.R. § 42.20(b) (“A motion will not
`be entered without Board authorization.”). However, because termination of
`this proceeding based on settlement comports with our mandate to ensure
`“the just speedy, and inexpensive resolution of every proceeding,” 37 C.F.R.
`§42.1(b), we exercise our discretion under 37 C.F.R. 42.5(b) to waive the
`requirement under 37 C.F.R. §42.20(b) that the Parties seek Board
`authorization prior to filing the Motion and the Request.
`
`2
`
`
`
`IPR2019-00711
`Patent 8,800,424 B2
`
`As stated in the Motion, although we “issued an institution decision
`on August 20, 2019 (Paper 7), . . . the Parties have not completed their
`submissions of briefs or supporting evidence (for example, a Patent Owner’s
`Response has not yet been filed)[, and] Oral Argument is not scheduled to
`occur until May 27, 2020.” Motion 1. In other words, we have not yet
`decided the merits of the proceeding, and a final written decision has not
`been entered.
`
`Furthermore, the Parties represent that they have “executed a binding,
`confidential Settlement Agreement effective [November] 16, 2019,” and that
`“[a] true and correct copy of the Settlement Agreement” was submitted with
`the Motion as Exhibit 2006. Id. at 1–2. The Parties represent that, “[a]s part
`of the Settlement Agreement, Petitioner and Patent Owner [have] agreed to
`terminate this proceeding,” and “have similarly agreed to dismiss” the
`related district court case. Id. at 2. The Parties further represent that “[t]here
`are no other pending lawsuits or proceedings between the Petitioner and
`Patent Owner relating to the ’424 patent.” Id.
`
`Based on the facts of this proceeding, and in view of the
`representations in the Parties’ Motion to terminate, we are persuaded that it
`is appropriate to terminate the proceeding with respect to both Parties
`without rendering a final written decision. See 37 C.F.R. §§ 42.5(a), 42.72.
`Therefore, the Motion to terminate is granted.
`Joint Request to Treat Settlement Agreement as Confidential
`Under 35 U.S.C. § 317 and 37 C.F.R. § 42.74, the Parties request that
`
`the Settlement Agreement be treated “as business confidential information,
`which shall be kept separate from the file of this proceeding and the
`involved patent.” Request 1.
`
`3
`
`
`
`IPR2019-00711
`Patent 8,800,424 B2
`Section 317(b) provides that:
`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.
`35 U.S.C. § 317(b); see also 37 C.F.R. § 42.74(c) (stating the same).
`
`Here, the Request was timely filed (concurrently) with the Parties’
`Motion to terminate. 37 C.F.R. § 42.74(c). Based on the facts of this
`proceeding, and in view of the Parties’ Request, we are persuaded that it is
`appropriate to treat the Settlement Agreement as business confidential
`information, and the Settlement Agreement shall be kept separate from the
`files of the ’424 patent. Therefore, the Request is granted.
`
`This Order does not constitute a final written decision pursuant to
`35 U.S.C. § 318(a).
`
`Accordingly, it is
`
`ORDERED that the Parties’ Motion to terminate the proceeding is
`granted;
`
`FURTHER ORDERED that the Parties’ Request to treat the
`Settlement Agreement as business confidential information is granted; and
`
`FURTHER ORDERED that the proceeding is terminated with respect
`to both Petitioner and Patent Owner pursuant to 35 U.S.C. § 317(a) and
`37 C.F.R. § 42.72.
`
`
`
`
`
`
`4
`
`
`
`IPR2019-00711
`Patent 8,800,424 B2
`PETITIONER:
`
`John van Loben Sels
`Steven Castaneda
`Jennifer Shih
`FISH IP LAW LLP
`jvalobensels@fishiplaw.com
`scastaneda@fishiplaw.com
`jshih@fishiplaw.com
`
`
`PATENT OWNER:
`
`William Nash
`Thomas King
`Jason Whitney
`HAYNES AND BOONE, LLP
`bill.nash@haynesboone.com
`thomas.king@haynesboone.com
`jason.whitney@haynesboone.com
`
`
`
`5
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
