`571-272-7822
`
`
`
`Paper 9
`Date: October 15, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SYTE – VISUAL CONCEPTION LTD.,
`Petitioner,
`
`v.
`
`SLYCE ACQUISITION INC.,
`Patent Owner.
`____________
`
`IPR2020-00881
`Patent 9,152,624 B1
`____________
`
`
`
`
`Before JENNIFER S. BISK, MICHELLE N. WORMMEESTER, and
`STEVEN M. AMUNDSON, Administrative Patent Judges.
`
`WORMMEESTER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Settlement Prior to Institution of Trial
`37 C.F.R. § 42.74
`
`
`
`
`
`
`
`
`
`IPR2020-00881
`Patent 9,152,624 B1
`
`
`Syte – Visual Conception Ltd. filed a Petition (Paper 1) requesting
`inter partes review of claims 12–22 of U.S. Patent No. 9,152,624 B1
`(Ex. 1101). Slyce Acquisition Inc. filed a Preliminary Response. Paper 6.
`On October 8, 2020, the parties filed a joint motion to terminate the
`instant proceeding pursuant to a settlement agreement. Paper 7. The parties
`also filed a copy of their settlement agreement made in connection with the
`termination of the instant proceeding. Ex. 1120. In a concurrently filed
`paper, the parties jointly request that the settlement agreement be treated as
`confidential and kept separate from the file of the involved patent under 35
`U.S.C. § 317(b) and 37 C.F.R. § 42.74. Paper 8. We authorized the filing of
`these papers in an e-mail sent on October 8, 2020.
`The instant proceeding is in an early stage, and the Board has not
`determined whether to institute trial. The parties represent that their
`settlement agreement “has been made in writing” and that Exhibit 1120 is “a
`true and correct copy” of their settlement agreement. Paper 7, 2. The parties
`further represent that “[t]here are no collateral agreements or understandings
`made in connection with, or in contemplation of, the termination of the
`proceeding.” Id.
`In view of the foregoing, we determine that it is appropriate to dismiss
`the Petition and terminate the proceeding.
`Accordingly, it is
`ORDERED that the joint motion to terminate the instant proceeding is
`granted, and the Petition is hereby dismissed; and
`FURTHER ORDERED that the parties’ joint request that their
`settlement agreement (Ex. 1120) be treated as business confidential
`
`2
`
`
`
`IPR2020-00881
`Patent 9,152,624 B1
`
`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.
`
`
`
`
`FOR PETITIONER:
`
`Guy Yonay
`Milo Eadan
`David Loewenstein
`Zeev Pearl
`Kyle Auteri
`gyonay@pearlcohen.com
`meadan@pearlcohen.com
`dloewenstein@pearlcohen.com
`zpearl@pearlcohen.com
`kauteri@pearlcohen.com
`
`
`FOR PATENT OWNER:
`
`Christopher L. Drymalla
`Brian H. Tompkins
`Patrick Connolly
`Bracewell LLP
`chris.drymalla@bracewell.com
`brian.tompkins@bracewell.com
`patrick.connolly@bracewell.com
`
`
`3
`
`