`571-272-7822
`
`Paper No. 11
`Date Entered: June 5, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`OMNI MEDSCI, INC.,
`Patent Owner.
`____________
`
`IPR2020-00209
`Patent 10,213,113 B2
`____________
`
`
`
`
`Before GRACE KARAFFA OBERMANN, JOHN F. HORVATH, and
`SHARON FENICK, Administrative Patent Judges.
`
`FENICK, Administrative Patent Judge.
`
`
`ORDER DENYING JOINT MOTON TO TERMINATE,
`GRANTING LEAVE TO FILE AMENDED MOTION TO TERMINATE,
`AND GRANTING JOINT REQUEST THAT SETTLEMENT
`AGREEMENT BE TREATED AS BUSINESS CONFIDENTIAL
`INFORMATION AND KEPT SEPARATE
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`
`
`IPR2020-00029
`Patent 10,213,113 B2
`
`
`The parties have requested that this proceeding be terminated pursuant
`to a settlement. On May 27, 2020, the Board authorized the parties to file a
`Joint Motion to Terminate and a Joint Request to Keep Separate, requesting
`that the settlement agreement be treated as business confidential information
`under 37 C.F.R. 42.74(c). On June 2, 2020 the parties filed a Joint Motion
`to Terminate, Paper 9 (“Mot. To Terminate”), and a Joint Request to Keep
`Separate, Paper 10. See 35 U.S.C. § 317(a) (2018); 37 C.F.R. § 42.72. The
`parties also filed a copy of a written settlement agreement. Paper 10; Ex.
`1067.
`A Decision on Institution has not yet been issued. The parties note
`that in the district court they dismissed their respective claims and
`counterclaims concerning the patent that is the subject of this proceeding.
`Mot. to Terminate 1. The Motion to Terminate explains reasons termination
`is appropriate and states that the parties have not identified any other related
`matters. Id. at 1–3.
`In the Motion to Terminate, the parties represent that the written
`settlement agreement has been filed as Exhibit 1067. Id. at 4. However, the
`Motion to Terminate does not certify that there are no collateral agreements
`or understandings made in connection with, or in contemplation of, the
`termination of the proceeding. See 35 U.S.C. § 317(b). In the absence of
`such a certification, it is not appropriate to terminate the proceeding at this
`time.
`
`The parties are granted leave to file an Amended Motion to Terminate
`certifying there are no such collateral agreements or understandings.
`
`
`
`2
`
`
`
`IPR2020-00029
`Patent 10,213,113 B2
`
`
`It is, therefore,
`ORDERED that the Joint Motion to Terminate the proceeding is
`DENIED;
`FURTHER ORDERED that the parties are granted leave to file an
`Amended Joint Motion to Terminate containing a certification that there are
`no collateral agreements or understandings not later June 12, 2020; and
`FURTHER ORDERED that the parties’ Joint Request to Keep
`Separate, requesting that the settlement agreement be treated as business
`confidential information and kept separate from the file of the involved
`patent under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c),
`is GRANTED.
`
`
`
`
`
`
`3
`
`
`
`IPR2020-00029
`Patent 10,213,113 B2
`
`
`
`
`PETITIONER: (via electronic transmission)
`
`Jeffery Kushan
`Ching-Lee Fukuda
`Thomas Broughan
`SIDLEY AUSTIN LLP
`jkushan@sidley.com
`clfukuda@sidley.com
`tbroughan@sidley.com
`
`PATENT OWNER: (via electronic transmission)
`
`Thomas Lewry
`John LeRoy
`Robert Tuttle
`John Halan
`Christopher Smith
`Andrew Turner
`BROOKS KUSHMAN P.C.
`tlewry@brookskushman.com
`jleroy@brookskushman.com
`rtuttle@brookskushman.com
`jhalan@brookskushman.com
`csmith@brookskushman.com
`aturner@brookskushman.com
`
`
`
`4
`
`
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