`Tel: 571-272-7822
`
`Paper 21
`Entered: February 4, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`OMNI MEDSCI, INC.,
`Patent Owner.
`__________________________
`
`IPR2019-00914 (Patent 9,861,286 B1)
` IPR2019-00917 (Patent 9,757,040 B2)1
`
`
`
`
`
`
`
`
`
`
`Before GRACE KARAFFA OBERMANN, JOHN F. HORVATH, and
`SHARON FENICK, Administrative Patent Judges.
`
`FENICK, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Granting Joint Motion to Terminate
`Granting Joint Request to Keep Confidential and Separate
`35 U.S.C. § 317; 37 C.F.R. §§ 42.71, 42.74
`
`
`
`
`
`
`1 This order is to be filed in each proceeding. The parties are not authorized
`to use this style heading in any subsequent papers.
`
`
`
`IPR2019-00914 (Patent 9,861,286 B1)
`IPR2019-00917 (Patent 9,757,040 B2)
`
`
`I.
`
`INTRODUCTION
`
`Petitioner and Patent Owner (collectively referred to as “the Parties”)
`
`have requested that the above-identified inter partes review proceedings be
`
`terminated pursuant to a settlement. On January 22, 2020, we authorized the
`
`Parties to file a joint motion to terminate in each proceeding. On January
`
`27, 2020, the Parties filed, in each proceeding, a Joint Motion to Terminate
`
`(collectively, “Joint Motions”). IPR2019-00914, Paper 19; IPR2019-00917,
`
`Paper 20. The Parties filed, in each proceeding, a copy of their Confidential
`
`Settlement Agreement (“Settlement Agreements”). IPR2019-00914, Ex.
`
`1060; IPR2019-00917, Ex. 1060. The Parties also filed, in each proceeding,
`
`a Joint Request to Keep Separate, requesting the Settlement Agreements be
`
`filed as business confidential information and be kept separate from the file
`
`of the involved patent pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
`
`§ 42.74(c) (collectively, “Joint Requests”). IPR2019-00914, Paper 20;
`
`IPR2019-00917, Paper 21.
`
`II. DISCUSSION
`
`In the Joint Motions, the Parties represent that they have reached an
`
`agreement regarding U.S. Patent Nos. 9,757,040 B2 and 9,861,286 B1, that
`
`they jointly seek termination of the above-identified inter partes review
`
`proceedings, that the filed Settlement Agreements are true and accurate
`
`copies, and that there are no collateral agreements made in connection with
`
`the termination of the proceedings. IPR2019-00914, Paper 19, 1, 3–4;
`
`IPR2019-00917, Paper 20, 1, 3–4.
`
`We have instituted a trial in each proceeding (IPR2019-00914, Paper
`
`13; IPR2019-00917, Paper 14), but, as the Parties indicate, no patent owner
`
`response has been filed in either proceeding. The panel has not decided the
`
`2
`
`
`
`IPR2019-00914 (Patent 9,861,286 B1)
`IPR2019-00917 (Patent 9,757,040 B2)
`
`merits of the challenges presented in each of the proceedings. In view of the
`
`stage of these proceedings and the settlement between the Parties, we
`
`determine that good cause exists to terminate each of the inter partes review
`
`proceedings.
`
`In the Joint Requests the Parties ask that the Settlement Agreements
`
`be treated as business confidential information and be kept separate from the
`
`files of the patents involved in these inter partes review proceedings.
`
`IPR2019-00914, Paper 20, 1; IPR2019-00917, Paper 21, 1. After reviewing
`
`the Settlement Agreements between Petitioner and Patent Owner, we find
`
`that the Settlement Agreements contain confidential business information
`
`regarding the terms of settlement. We determine that good cause exists to
`
`treat the Settlement Agreements between Petitioner and Patent Owner as
`
`business confidential information pursuant to 37 C.F.R. § 42.74(c).
`
`This Order does not constitute a final written decision pursuant to
`
`35 U.S.C. § 318(a).
`
`III. ORDER
`
`Accordingly, for the reasons discussed above, it is:
`
`ORDERED that, in each of IPR2019-00914 and IPR2019-00917, the
`
`Joint Motion to Terminate is granted, and each proceeding is hereby
`
`terminated; and
`
`FURTHER ORDERED that the parties’ Joint Requests to keep
`
`confidential and separate are granted, and the Settlement Agreements shall
`
`be kept separate from the files of U.S. Patent Nos. 9,757,040 B2 and
`
`9,861,286 B1, and made available only to Federal Government agencies on
`
`written request, or to any person on a showing of good cause, pursuant to 37
`
`C.F.R. § 42.74(c).
`
`3
`
`
`
`IPR2019-00914 (Patent 9,861,286 B1)
`IPR2019-00917 (Patent 9,757,040 B2)
`
`PETITIONER:
`
`Jeffrey Kushan
`jkushan@sidley.com
`
`Ching-Lee Fukuda
`clfukuda@sidley.com
`
`Thomas Broughan
`tbroughan@sidley.com
`
`PATENT OWNER:
`
`Thomas Lewry
`tlewry@brookskushman.com
`
`John LeRoy
`jleroy@brookskushman.com
`
`Robert Tuttle
`rtuttle@brookskushman.com
`
`John Halan
`jhalan@brookskushman.com
`
`Christopher Smith
`csmith@brookskushman.com
`
`
`4
`
`
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