Trials
`Gordon, Lori (Perkins Coie); Trials
`Oaks, Brian; Matthew, Thomas (Perkins Coie); morgan.mayne@bakerbotts.com; jeff.becker@bakerbotts.com;
`clarke.stavinoha@bakerbotts.com
`RE: IPR2023-01104, -1105, -1227: Authorization to File Motion to Terminate Due to Settlement and Request to
`Treat Settlement Agreement As Confidential
`Thursday, February 22, 2024 11:59:51 AM
`
`From:
`To:
`Cc:
`
`Subject:
`
`Date:
`
`Counsel,
`
`The parties are authorized to file a joint motion to terminate in each proceeding. The parties should
`file a true copy of the settlement agreement and any collateral agreements (including any licensing
`agreements) with the Board. See DTN v. Farms Technology, LLC, IPR2018-01412, Paper 21 (June 19,
`2019 PTAB) (precedential) (explaining requirements for filing collateral agreements). The parties
`should include a statement in the joint motion to terminate that there are no other agreements, oral
`or written, between the parties made in connection with, or in contemplation of, the termination of
`the proceeding, assuming such statement is correct. Alternatively, if the parties cannot make such a
`statement, the other agreement(s) should be filed pursuant to 37 C.F.R. § 42.74(b).
`
`The parties also are authorized to file a joint request to treat the settlement agreement as business
`confidential information in each proceeding. To have the settlement agreement treated as business
`confidential information under 37 C.F.R. § 42.74(c), the parties must file a true copy of the
`confidential settlement agreement electronically in Patent Trial and Appeal Board End to End (PTAB
`E2E) as an exhibit in accordance with the instructions provided on the Board’s website (uploading as
`“Parties and Board Only”). The parties are directed to FAQ G2 on the Board’s website at
`https://www.uspto.gov/sites/default/files/documents/p-tacts_faqs_20221007.pdf for guidance on
`how to file their settlement agreement as confidential.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`From: Gordon, Lori (Perkins Coie) <LoriGordon@perkinscoie.com>
`Sent: Thursday, February 22, 2024 10:38 AM
`To: Trials <Trials@USPTO.GOV>
`Cc: Oaks, Brian <Boaks@mwe.com>; Matthew, Thomas (Perkins Coie)
`<TMatthew@perkinscoie.com>; morgan.mayne@bakerbotts.com; jeff.becker@bakerbotts.com;
`clarke.stavinoha@bakerbotts.com
`Subject: IPR2023-01104, -1105, -1227: Authorization to File Motion to Terminate Due to Settlement
`and Request to Treat Settlement Agreement As Confidential
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`IPR2023-01104, -01104, 01227
`Ex. 3001
`
`

`

`IPR2023-01104: U.S. Patent 8,682,505
`IPR2023-01105: U.S. Patent 8,332,082
`IPR2023-01227: U.S. Patent 11,288,972
`
`Your Honors –
`
`All disputes between Petitioner and Patent Owner related to U.S. Patent 8,682,505, U.S. Patent
`8,332,082, and U.S. Patent 11,288,972 have been resolved by settlement. Petitioner and Patent
`Owner therefore jointly request authorization to file (1) a motion to terminate the above-referenced
`IPRs and (2) a joint request to treat their settlement agreement as business confidential information.
`
`Should the Board require a conference call to discuss this request, the parties are generally available
`during business hours Eastern time (or can propose specific times and dates of availability).
`
`Regards –
`
`Lori A. Gordon
`Lead Counsel – Petitioner
`
`Brian Oaks
`Lead Counsel – Patent Owner
`
`Lori Gordon | Perkins Coie LLP
`PARTNER
`700 Thirteenth Street, N.W., Suite 800,
`Washington, DC 20005-3960
`D. +1.202.661.5883
`E. LoriGordon@perkinscoie.com
`Pronouns: she/her/hers
`
`NOTICE: This communication may contain privileged or other confidential information. If you have received it in error, please advise the
`sender by reply email and immediately delete the message and any attachments without copying or disclosing the contents. Thank you.
`
`