Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 17
`Date: May 13, 2020
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`COMMUNICATIONS TEST DESIGN, INC.,
`Petitioner,
`
`v.
`
`CONTEC, LLC,
`Patent Owner.
`____________
`
`IPR2019-01669 (Patent 8,689,071 B2)
`IPR2019-01670 (Patent 8,209,731 B2)1
`____________
`
`
`Before KEVIN F. TURNER, TREVOR M. JEFFERSON, and
`JOHN P. PINKERTON, Administrative Patent Judges.
`
`PINKERTON, Administrative Patent Judge.
`
`
`TERMINATION
`Due to Settlement After Institution of Trial
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`
`
`
`
`1 This Order is applicable to each of these proceedings and will be entered
`in each proceeding.
`
`
`Tel: 571-272-7822
`
`Paper 17
`Date: May 13, 2020
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`COMMUNICATIONS TEST DESIGN, INC.,
`Petitioner,
`
`v.
`
`CONTEC, LLC,
`Patent Owner.
`____________
`
`IPR2019-01669 (Patent 8,689,071 B2)
`IPR2019-01670 (Patent 8,209,731 B2)1
`____________
`
`
`Before KEVIN F. TURNER, TREVOR M. JEFFERSON, and
`JOHN P. PINKERTON, Administrative Patent Judges.
`
`PINKERTON, Administrative Patent Judge.
`
`
`TERMINATION
`Due to Settlement After Institution of Trial
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`
`
`
`
`1 This Order is applicable to each of these proceedings and will be entered
`in each proceeding.
`
`
`
`IPR2019-01669, -01670
`Patents 8,209,731 B2; 8,689,071 B2
`
`
`I. INTRODUCTION
`On March 25, 2020, the Decision Granting Institution of Inter Partes
`
`Review was entered in IPR2019-01669, which involves claims 1−7 of U.S.
`Patent No. 8,689,071 B2 (“the ’071 patent”). Paper 9. On that same day,
`the Decision Granting Institution of Inter Partes Review was entered in
`IPR2019-01670, which involves claims 1−25 of U.S. Patent No. 8,209,732
`B2 (“the ’732 patent”). Paper 9.
`
`Petitioner and Patent Owner now jointly request that these inter partes
`review proceedings be terminated pursuant to a settlement. On May 7, 2020,
`the parties filed a Joint Motion to Terminate Inter Partes Review pursuant to
`35 U.S.C. § 317 in both of these proceedings.2 Paper 11 (“Joint Motion”).
`Concurrently, the parties also filed a Joint Request to File Confidential
`Settlement Agreement as Business Confidential Information (Paper 12,
`“Joint Request”) and their Confidential Settlement Agreement (Ex. 1022,
`“Settlement Agreement”). We authorized the filing of these papers in an
`email to counsel for the parties dated May 1, 2020.
`
`II. DISCUSSION
`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.”
`
`
`2 The joint motion to terminate and other papers filed concurrently by the
`parties in both of these proceedings are substantially identical, except for the
`patent numbers and certain exhibit numbers. For ease of reference, we will
`refer to the papers filed in IPR2019-01669.
`
`2
`
`
`
`IPR2019-01669, -01670
`Patents 8,209,731 B2; 8,689,071 B2
`
`Section 317(b) requires that any agreement between the parties, including
`collateral agreements, made in connection with the termination of an inter
`partes review “shall be in writing and a true copy of such agreement or
`understanding shall be filed in the Office before the termination of the inter
`partes review as between the parties.”
`
`In the Joint Motion, the parties state that they have “entered into a
`Confidential Settlement Agreement that resolves all underlying disputes”
`between them with respect to the ’732 and ’071 patents. Paper 11, 1. The
`parties also state that under the terms of their settlement agreement, they
`“agreed to jointly seek termination” of these proceedings. Id. The parties
`further state that the two district court actions involving the ’732 and ’071
`patents have been dismissed with prejudice. Id. at 2. Moreover, the parties
`represent that there are “no agreements or understandings, oral or written,
`between the parties beyond those of Exhibit 1022 made in connection with,
`or in contemplation of, the termination of this inter partes review.” Id. at 5.
`
`In the Joint Request, the parties state that they consider their
`confidential settlement agreement “to contain highly sensitive business
`confidential information that would substantially harm their business
`interests if publicly disclosed.” Paper 12, 1. Thus, the parties jointly
`request “that Exhibit 1022 be kept as a separate paper to be made available
`only under the provisions of 35 U.S.C § 317(b) and 37 C.F.R. § 42.74(c).”
`Id.
`Although we instituted an inter partes review for each of these
`
`proceedings on March 25, 2020, neither proceeding has reached due date 1
`of the scheduling order, as the parties state (Paper 12, 1 (citing Paper 10)),
`and we have not yet decided the merits of, or entered a final written decision
`
`3
`
`
`
`IPR2019-01669, -01670
`Patents 8,209,731 B2; 8,689,071 B2
`
`in, either of the proceedings. Given the early stage of these proceedings, the
`parties have shown adequately that termination is appropriate. Under these
`circumstances, we determine that good cause exists to terminate the
`proceedings. We further determine that the Settlement Agreement complies
`with the requirements for written agreements regarding termination set forth
`in 35 U.S.C. § 317(b).
`
`With respect to the Joint Request, we have reviewed the Settlement
`Agreement and find that it contains confidential business information of the
`parties regarding the terms of settlement. We determine that good cause
`exists to treat the Settlement Agreement as business confidential information
`pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`
`III. CONCLUSION
`For the foregoing reasons, we grant the parties’ Joint Motion and Joint
`
`Request in each of these proceedings. This determination does not
`constitute a final written decision pursuant to 35 U.S.C. § 318(a).
`
`IV. ORDER
`
`Accordingly, it is:
`
`ORDERED that, for each proceeding, the Joint Motion to Terminate
`
`is granted, and IPR2019-01669 and IPR2019-01670 are terminated due to
`settlement after institution decision with respect to Petitioner and Patent
`Owner pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72; and,
`
`FURTHER ORDERED that, for each proceeding, the Joint Request
`that the Settlement Agreement be treated as business confidential
`information is granted, and the Settlement Agreement shall be kept separate
`from the files of U.S. Patent Nos. 8,209,731 B2 and 8,689,071 B2, and made
`
`4
`
`
`
`IPR2019-01669, -01670
`Patents 8,209,731 B2; 8,689,071 B2
`
`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).
`
`
`
`
`
`
`5
`
`
`
`IPR2019-01669, -01670
`Patents 8,209,731 B2; 8,689,071 B2
`
`For PETITIONER:
`Richard W. Miller
`Lynn E. Rzonca
`Jonathon A. Talcott
`BALLARD SPAHR LLP
`millerrw@ballardspahr.com
`rzoncal@ballardspahr.com
`talcottj@ballardspahr.com
`Contec_071_IPR@ballardspahr.com
`
`
`For PATENT OWNER:
`Coby S. Nixon
`TAYLOR ENGLISH DUMA LLP
`cnixon@taylorenglish.com
`
`
`6
`
`
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