Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 8
`Date: December 8, 2020
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`SQUARE, INC.,
`Petitioner,
`
`v.
`
`SENDSIG, LLC,
`Patent Owner.
`_____________
`
`IPR2020-00930
`Patent 6,564,249 B2
`____________
`
`
`Before DAVID C. McKONE, JOHN P. PINKERTON, and
`MELISSA A. HAAPALA, 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
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 8
`Date: December 8, 2020
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`SQUARE, INC.,
`Petitioner,
`
`v.
`
`SENDSIG, LLC,
`Patent Owner.
`_____________
`
`IPR2020-00930
`Patent 6,564,249 B2
`____________
`
`
`Before DAVID C. McKONE, JOHN P. PINKERTON, and
`MELISSA A. HAAPALA, 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
`
`
`
`
`
`
`
`IPR2020-00930
`Patents 6,564,249 B2
`
`
`I. INTRODUCTION
`On November 18, 2020, the Decision Granting Institution of Inter
`
`Partes Review was entered in this proceeding in which Petitioner challenges
`claims 1, 2, 4, 5, 11, 12, 14, and 15 of U.S. Patent No. 6,564,249 B2 (“the
`’249 patent”). Paper 5. On December 1, 2020, the parties filed a Joint
`Motion to Terminate Inter Partes Review in which they jointly move to
`terminate this proceeding based on an agreement between the parties. Paper
`7, 1 (“Joint Motion”). Concurrently, the parties also filed their Confidential
`Agreement. Ex. 1020 (“Agreement”). The parties jointly request under 37
`C.F.R. § 42.74(c) that Exhibit 1020 be treated as business confidential
`information. Joint Motion, 1. We authorized the filing of these papers in an
`email to counsel for the parties dated November 24, 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.”
`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 they have “agreed to resolve their
`disputes relating to United States Patent No. 6,564,249, to dismiss with
`prejudice the co-pending litigation (SendSig, LLC v. Square, Inc., No. 1:19-
`cv-03733-JPB) and request termination of this proceeding.” Joint Motion, 1.
`
`2
`
`
`
`IPR2020-00930
`Patents 6,564,249 B2
`
`The parties also represent that there “are no other agreements or
`understandings, oral or written, between the parties made in connection with,
`or in contemplation of, the termination of . . . [this] proceeding. Id. The
`parties request that we grant the joint motion for termination because no
`dispute remains between the parties regarding the ’249 patent, a final written
`decision has not yet been entered, no discovery has taken place, and
`termination would be consistent with with the “strong public policy
`reasons favoring settlement between the parties to a proceeding.” Id. at 2
`(citing Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug.
`14, 2012)).
`
`Although we recently instituted an inter partes review in this
`proceeding, the proceeding has not reached due date 1 of the scheduling
`order (see Paper 6, 10), and we have not yet decided the merits of, or entered
`a final written decision in, this proceeding. Given the early stage of the
`proceeding, the parties have shown adequately that termination is
`appropriate. Under these circumstances, we determine that good cause
`exists to terminate the proceeding. We further determine that the Agreement
`complies with the requirements for written agreements regarding termination
`set forth in 35 U.S.C. § 317(b).
`
`With respect to the parties joint request to treat the Agreement as
`business confidential information, we have reviewed the Agreement and find
`that it contains confidential business information of the parties regarding the
`terms of settlement. Thus, we determine that good cause exists to treat the
`
`3
`
`
`
`IPR2020-00930
`Patents 6,564,249 B2
`
`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 to
`
`terminate this proceeding and their joint request to treat the Agreement as
`business confidential information. This determination does not constitute a
`final written decision pursuant to 35 U.S.C. § 318(a).
`IV. ORDER
`
`Accordingly, it is:
`
`ORDERED that the Joint Motion to Terminate is granted, and
`
`IPR2020-00930 is 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 the parties’ joint request that the
`Agreement be treated as business confidential information is granted, and
`the Agreement shall be kept separate from the files of U.S. Patent No.
`6,654,249 B2, 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).
`
`
`
`
`
`
`4
`
`
`
`IPR2020-00930
`Patents 6,564,249 B2
`
`For PETITIONER:
`Sasha G. Rao
`Brandon H. Stroy
`MAYNARD, COOPER & GALE, LLP
`srao@maynardcooper.com
`bstroy@maynardcooper.com
`
`For PATENT OWNER:
`Lawrence A. Aaronson
`Warren J. Thomas
`MEUNIER CARLIN & CURFMAN LLC
`laaronson@mcciplaw.com
`wthomas@mcciplaw.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
