`571-272-7822
`
`Paper 12
`Entered: January 4, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NU MARK LLC,
`Petitioner,
`
`v.
`
`FONTEM HOLDINGS 1 B.V.,
`Patent Owner.
`____________
`
`Case IPR2016-012881
`Patent 8,893,726 B2
`____________
`
`
`
`
`
`Before GRACE KARAFFA OBERMANN, JOSIAH C. COCKS, BRIAN J.
`McNAMARA, RAMA G. ELLURU, JEREMY M. PLENZLER, JO-ANNE
`M. KOKOSKI, KRISTINA M. KALAN, and KIMBERLY McGRAW,
`Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`
`
`TERMINATION
`Dismissing the Petitions
`37 C.F.R. §§ 42.5(a) and 42.71(a)
`
`
`
`1 This Judgment addresses the same issues raised in the cases identified in
`the Appendix. Therefore, we exercise our discretion to issue one Judgment
`to be entered in IPR2016-01288 and in each of the cases identified in the
`Appendix.
`
`
`
`IPR2016-01288
`Patent 8,893,726 B2
`
`
`On January 3, 2017, the parties filed joint motions to terminate
`
`IPR2016-01288 and the proceedings identified in the Appendix (Paper 17),2
`
`along with what they indicate is a true copy of their settlement agreement
`
`(Ex. 2019). The parties indicate in their joint motions that “they reached a
`
`settlement agreement, resolving all disputes between them involving” the
`
`patents at issue in each of these proceedings. Paper 17, 1. On the same day,
`
`the parties also filed joint requests that the settlement agreement be treated
`
`as business confidential information and kept separate from the patent files.
`
`Paper 18.
`
`The instant proceedings are in the early stages, and decisions on
`
`whether to institute trial have not been made. The parties represent that
`
`“[t]here are no other agreements, oral or written, between Patent Owner and
`
`Petitioner Nu Mark made in connection with, or in contemplation of,” the
`
`termination of these proceedings. Paper 17, 1. The parties also represent
`
`that “[t]he settlement agreement has resolved all disputes” between the
`
`parties involving each of the patents identified in the Appendix, including
`
`the related district court cases. Id. at 4. The parties further represent that
`
`Exhibit 2019 is “a true copy (including counterparts) of the settlement
`
`agreement.” Id. at 1. Under these circumstances, it is appropriate to dismiss
`
`the Petition for Inter Partes Review in IPR2016-01288 and in each of the
`
`proceedings identified in the Appendix. This paper does not constitute a
`
`final written decision pursuant to 35 U.S.C. § 318(a).
`
`
`2 The parties filed similar papers in each of the instant proceedings. We
`refer to those filed in Case IPR2016-01288 for convenience.
`
`2
`
`
`
`IPR2016-01288
`Patent 8,893,726 B2
`
`
`As requested by the parties, the settlement agreement will be treated
`
`as business confidential information and kept separate from the patent files.
`
`37 C.F.R. § 42.74(c).
`
`
`
`Accordingly, it is
`
`ORDERED that the joint motions to terminate IPR2016-01288 and
`
`the proceedings identified in the Appendix are granted;
`
`FURTHER ORDERED that the Petitions for Inter Partes Review in
`
`IPR2016-01288 and the proceedings identified in the Appendix are
`
`dismissed; and
`
`FURTHER ORDERED that a copy of this Judgment be filed in
`
`IPR2016-01288 and each of the cases identified in the Appendix; and
`
`FURTHER ORDERED that the parties’ joint requests in IPR2016-
`
`01288 and the proceedings identified in the Appendix that the settlement
`
`agreement in each proceeding be treated as business confidential
`
`information, to be kept separate from the patent files, are granted.
`
`
`
`
`
`3
`
`
`
`
`
`IPR2016-01288
`Patent 8,893,726 B2
`
`PETITIONER:
`
`Elizabeth Stotland Weiswasser
`Adrian Percer
`Jeremy Jason Lang
`Brian Chang
`Anish Desai
`WEIL, GOTSHAL & MANGES LLP
`elizabeth.weiswasser@weil.com
`adrian.percer@weil.com
`jason.lang@weil.com
`brian.chang@weil.com
`anish.desai@weil.com
`
`
`
`PATENT OWNER:
`
`Michael J. Wise
`Joseph P. Hamilton
`PERKINS COIE LLP
`MWise@perkinscoie.com
`JHamilton@perkinscoie.com
`patentprocurement@perkinscoie.com
`
`4
`
`
`
`IPR2016-01288
`Patent 8,893,726 B2
`
`
`
`APPENDIX
`
`
`Case No.
`IPR2016-01288
`IPR2016-01297
`IPR2016-01298
`IPR2016-01302
`IPR2016-01303
`IPR2016-01641
`IPR2016-01642
`IPR2016-01664
`IPR2016-01668
`IPR2016-01705
`IPR2016-01706
`IPR2016-01707
`IPR2016-01773
`IPR2017-00204
`IPR2017-00205
`IPR2017-00257
`IPR2017-00303
`IPR2017-00304
`IPR2017-00342
`
`U.S. Patent No.
`8,893,726 B2
`8,893,726 B2
`8,689,805 B2
`8,899,239 B2
`8,365,742 B2
`9,326,548 B2
`9,370,205 B2
`9,326,549 B2
`9,364,027 B2
`9,339,062 B2
`9,326,551 B2
`9,326,550 B2
`9,320,300 B2
`9,326,548 B2
`9,326,550 B2
`9,370,205 B2
`9,339,062 B2
`9,364,027 B2
`9,326,551 B2
`
`
`
`5
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