Trials@uspto.gov
`571-272-7822
`
`Paper 23
`Entered: September 27, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`RESMAN, LLC,
`Petitioner,
`v.
`KARYA PROPERTY MANAGEMENT, LLC,
`Patent Owner.
`
`CBM2020-00020
`Patent 7,636,687 B2
`
`
`
`
`
`
`
`
`
`Before MEREDITH C. PETRAVICK, SUSAN L. C. MITCHELL, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`MITCHELL, Administrative Patent Judge.
`
`
`TERMINATION
`Due to Settlement After Institution of Trial
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`
`
`
`571-272-7822
`
`Paper 23
`Entered: September 27, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`RESMAN, LLC,
`Petitioner,
`v.
`KARYA PROPERTY MANAGEMENT, LLC,
`Patent Owner.
`
`CBM2020-00020
`Patent 7,636,687 B2
`
`
`
`
`
`
`
`
`
`Before MEREDITH C. PETRAVICK, SUSAN L. C. MITCHELL, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`MITCHELL, Administrative Patent Judge.
`
`
`TERMINATION
`Due to Settlement After Institution of Trial
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`
`
`
`
`CBM2020-00020
`Patent 7,636,687 B2
`
`
`INTRODUCTION
`I.
`Resman, LLC (“Petitioner”) filed a Petition (“Pet.”) to institute an
`covered business method patent review of claims 1–211 of U.S. Patent No.
`7,636,687 B2 (Ex. 1001, “the ’687 patent”). Paper 1. Karya Property
`Management, LLC (“Patent Owner”) filed a Preliminary Response (Paper 8,
`“Prelim. Resp.”). On March 17, 2021, we instituted a covered business
`method patent review of all challenged claims of the ’687 patent with
`respect to all grounds set forth in the Petition. Paper 9. Patent Owner has
`filed its Response (Paper 18).
`On September 9, 2021, the Parties filed an authorized Petitioner and
`Patent Owner’s Joint Motion to Terminate Covered Business Method
`Review Proceeding Pursuant to 35 U.S.C. § 327 (“Joint Motion to
`Terminate”). Paper 21. The Parties also filed a Joint Request to File
`Settlement Agreement as Business Confidential Information Pursuant to
`35 U.S.C. § 327. Paper 22.
`II. DISCUSSION
`Section 327 of Title 35 of the United States Code2 provides that a
`covered business method patent 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. . . . . If
`no petitioner remains in the post-grant review, the Office may
`
`1 Patent Owner has disclaimed claims 2 and 19. See Ex. 2011.
`2 The Transitional Program for Covered Business Method Patents states that
`a covered business method patent proceeding “shall be regarded as, and shall
`employ the standards and procedures of, a post-grant review under chapter
`32 of title 35 of the United States Code . . . .” Section 18(a)(1) of the Leahy-
`Smith America Invents Act (Pub. L. 112-29, 125 Stat. 284 (2011).
`
`2
`
`
`
`CBM2020-00020
`Patent 7,636,687 B2
`
`
`terminate the post-grant review or proceed to a final written
`decision under section 328(a).
`35 U.S.C. § 327(a).
`
`In the Joint Motion to Terminate, the Parties state that termination is
`appropriate because they have settled all disputes between them relating to
`the ’687 patent. Paper 21, 2. The Parties also state that they have entered
`into a mutual release, and the only pending litigation matter involving the
`validity of the claims of the ’687 patent has been dismissed with prejudice at
`the Parties’ request. Id. at 2–3. The Parties also represent that “there are no
`other agreements, oral or written, between the Parties made in connection
`with, or in contemplation of, the termination of these proceedings.” Id. at 3.
`
`As the parties have noted, we have not yet decided the merits of this
`proceeding, and no final written decision has been entered in this case. See
`id. at 3 (stating Petitioner’s reply is not yet due and has not been filed, “the
`proceedings are still in the preliminary stage, the record lacks full briefing
`on all trial issues, and the Board has not decided the merits of the
`proceeding”). Notwithstanding that this proceeding has moved beyond the
`preliminary stage, the Parties have shown sufficiently that the termination of
`this proceeding is appropriate. For instance, the Parties have represented
`that they have agreed to settle and dismiss all currently pending litigation,
`there is no other litigation relating to the patent currently pending, and there
`are no other Office related proceedings other than IPR2021-00844 for which
`the parties have also jointly requested termination. Id. at 4. Therefore, we
`agree with the Parties that terminating this proceeding conserves the
`resources of the Board and the Parties, ensures certainty, and promotes
`settlements for a more efficient and streamlined patent system. See id. at 3–
`
`3
`
`
`
`CBM2020-00020
`Patent 7,636,687 B2
`
`4. Under these circumstances, we determine that good cause exists to
`terminate the above-identified proceeding with respect to the Parties.
`
`The Parties also filed a Joint Request to file the Settlement Agreement
`(Ex. 1013) as business confidential information, which shall be kept separate
`from the file of the ’687 patent. Paper 22. After reviewing the Settlement
`Agreement between Petitioner and Patent Owner, we find that the
`Agreement contains confidential business information regarding the terms of
`settlement. We determine that good cause exists to treat the Settlement
`Agreement (Ex. 1013) between Petitioner and Patent Owner as business
`confidential information pursuant to 35 U.S.C. § 327(b) and 37 C.F.R.
`§ 42.74(c).
`
`This Order does not constitute a final written decision pursuant to
`35 U.S.C. § 328(a).
`
`III. ORDER
`Accordingly, it is hereby:
`ORDERED that the Joint Motion to Terminate (Paper 21) is granted,
`and CBM2020-00020 is terminated with respect to Petitioner and Patent
`Owner pursuant to 35 U.S.C. § 327(a);
`
`FURTHER ORDERED that the Joint Request (Paper 22) to File
`Settlement Agreement (Ex.1013) as Business Confidential Information
`Pursuant to 35 U.S.C. § 327 is granted; and
`
`FURTHER ORDERED that the Settlement Agreement (Ex. 1013) shall
`be kept separate from the file of U.S. Patent No. 7,636,687 B2 and made
`available only to Federal Government agencies on written request, or to any
`person on a showing of good cause, pursuant to 35 U.S.C. § 327(b) and
`37 C.F.R. § 42.74(c).
`
`
`4
`
`
`
`CBM2020-00020
`Patent 7,636,687 B2
`
`PETITIONER:
`John Yates
`Brooks Tueting
`PATTERSON + SHERIDAN, LLP
`jyates@pattersonsheridan.com
`btueting@pattersonsheridan.com
`
`PATENT OWNER:
`Ali Dhanani
`Roger Fulghum
`Clarke Stavinoha
`BAKER BOTTS L.L.P.
`Ali.dhanani@bakerbotts.com
`Roger.fulghum@bakerbotts.com
`Clarke.stavinoha@bakerbotts.com
`
`5
`
`
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