`571-272-7822
`
`
`
`Paper 9
`Entered: October 5, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`UNIFIED PATENTS, LLC,
`Petitioner,
`v.
`QWIKCASH, LLC,
`Patent Owner.
`_______________
`
`IPR2020-00972
`Patent 8,714,445 B1
`_______________
`
`
`Before JUSTIN T. ARBES, DAVID C. MCKONE, and
`TERRENCE W. MCMILLIN, Administrative Patent Judges.
`
`MCMILLIN, Administrative Patent Judge.
`
`
`
`DECISION
`Settlement Prior to Institution of Trial
`37 C.F.R. § 42.74
`
`
`
`
`
`
`
`IPR2020-00972
`Patent 8,714,445 B1
`
`
`On September 25, 2020, Petitioner and Patent Owner (collectively
`referred to as “the parties”) filed a Joint Motion to Terminate the above-
`identified proceeding (Paper 7 (“Joint Motion”)) and a Joint Motion to keep
`a settlement agreement as business confidential information and to keep the
`settlement agreement separate from the file of the involved patent (Paper 8
`(“Joint Request”)), pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74,
`along with a copy of the written settlement agreement (Ex. 1027
`(“Settlement Agreement”)).
`In the Joint Motion, the parties represent that they have reached an
`agreement to jointly seek termination of this inter partes review proceeding.
`In addition, the parties represent that the filed copy of the Settlement
`Agreement is a true and complete copy and “that there are no other
`agreements, oral or written, between the parties made in connection with, or
`in contemplation of, the termination of the present proceeding.” Paper 7, 1.
`The parties further represent that their Settlement Agreement resolves all
`currently pending Patent Office proceedings between the parties involving
`the challenged patent. Id at 3.
`This proceeding is at an early stage. Patent Owner has not filed a
`preliminary response and we have not decided whether to institute a trial. In
`view of the early stage of the proceeding and the settlement between the
`parties, we determine that good cause exists to terminate this proceeding.
`Additionally, upon review of the Joint Request that the Settlement
`Agreement be treated as business confidential information and be kept
`separate from the file of the patent involved in this inter partes review
`proceeding, we determine that good cause exists to treat the Settlement
`
` 2
`
`
`
`
`
`
`
`IPR2020-00972
`Patent 8,714,445 B1
`
`Agreement between Petitioner and Patent Owner as business confidential
`information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`Therefore, the Joint Motion and the Joint Request are granted.
`This Order does not constitute a final written decision pursuant to
`35 U.S.C. § 318(a).
`Accordingly, it is:
`ORDERED that the Joint Motion (Paper 7) to terminate the above-
`identified proceeding is granted, and IPR2020-00972 is terminated; and
`FURTHER ORDERED that the Joint Request (Paper 8) that the
`Settlement Agreement (Ex. 1027) be treated as business confidential
`information and be kept separate from the file of the above-identified
`proceeding and from the file of U.S. Patent No. 8,714,445 B1, under the
`provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is granted.
`
`
` 3
`
`
`
`
`
`
`
`
`
`
`
`IPR2020-00972
`Patent 8,714,445 B1
`
`Petitioner:
`
`Jason Mudd
`Eric Buresh
`ERISE IP, P.A.
`jason.mudd@eriseip.com
`eric.buresh@eriseip.com
`
`Ashraf Fawzy
`Alyssa Holtslander
`UNIFIED PATENTS INC.
`afawzy@unifiedpatents.com
`alyssa@unifiedpatents.com
`
`
`Patent Owner:
`
`Brian Lynch
`NIRO MCANDREWS, LLP
`blynch@niro-mcandrews.com
`
` 4
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`
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