`From: Edward Runyan <edward@neustel.com>
`Sent: Thursday, June 14, 2018 4:19 PM
`To: Steven R. Daniels <SDaniels@dickinson-wright.com>; Trials
`<Trials@USPTO.GOV>
`Cc: Shannon Cartwright <scartwright@neustel.com>; Michael Neustel
`<michael@neustel.com>
`Subject: RE: IPR2017-01909/01911 Barco v. T-Rex
`
`Dear Mr. Kellogg:
`
`On behalf of Barco, I also confirm that there are no other written or oral
`agreements or understandings, including any collateral agreements, between the
`parties, including but not limited to licenses, covenants not to sue, confidentiality
`agreements, payment agreements, or other agreements of any kind, that are
`made in connection with, or in contemplation of, the termination of the
`proceedings.
`
` I
`
` will make one correction to Mr. Daniels’ statement: I, Edward Runyan, not Mr.
`Neustel, am lead counsel for Barco, and I made the filings to terminate the
`proceedings on Barco’s behalf.
`
`Regards,
`
`Edward K. Runyan
`Partner
`
`
`Neustel Law Offices, LTD | 2534 South University Drive, Suite 4 | Fargo, North
`Dakota 58103
`Telephone: (701) 281-8822 | Facsimile: (701) 237-0544 | E-mail:
`edward@neustel.com | Website: www.neustel.com
`
`
`
`From: Steven R. Daniels [mailto:SDaniels@dickinson-wright.com]
`Sent: Thursday, June 14, 2018 3:08 PM
`To: Trials
`
`
`
`Cc: Edward Runyan
`Subject: RE: IPR2017-01909/01911 Barco v. T-Rex
`
`
`
`Dear Mr. Kellogg:
`Thank you for your response. The settlement agreement related to these IPRs
`and the copending District Court litigation was submitted by Mr. Neustel along
`with the motions to dismiss, as indicated in the document filing notice pasted
`below. I can confirm on behalf of the patent owner, T-Rex Property AB, Ltd, that
`there are no other written or oral agreements or understandings, including any
`collateral agreements, between them, including but not limited to licenses,
`covenants not to sue, confidentiality agreements, payment agreements, or other
`agreements of any kind, that are made in connection with, or in contemplation of,
`the termination of the proceedings. The District Court lawsuit has been dismissed
`with prejudice in accordance with the terms of the settlement agreement on file
`with the board.
`
`By this email, I request that Mr. Neustel also confirm that there are no other
`applicable agreements of any kind other than the settlement agreement that has
`been filed.
`
`Please let me know if you have any questions or require any additional
`information.
`
`Steven R. Daniels
`
`From: <PTABE2E_System@uspto.gov>
`Date: June 5, 2018 at 12:06:05 PM CDT
`To: <edward@neustel.com>, <michael@neustel.com>,
`<sdaniels@farneydaniels.com>, <tsingh@farneydaniels.com>
`Subject: IPR2017-01911: Document(s) Filed - Barco, Inc. v. T-Rex Property AB
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`PATENT TRIAL AND APPEAL BOARD
`
`Document Filing Notice
`
`AIA Review No.: IPR2017-01911
`Petitioner:
`Barco, Inc. et al. of Duluth, GA
`Patent Owner: T-Rex Property AB
`Patent No.:
`7382334
`Submitted Date: 06/05/2018
`Submitted By: Edward Runyan, edward@neustel.com
`
`The following document(s) has/have been filed.
`
`Document(s) List
`
`No. Document
`No.
`
`Document
`Type
`
`Document Name
`
`1
`
`10
`
`2
`
`11
`
`3
`
`1007
`
`Other
`
`Joint Request to Treat
`Settlement as
`Business Confidential
`Exhibit List Barco's Revised
`Exhibit List
`Confidential
`Settlement
`Agreement
`
`Exhibit
`
`Availability
`
`Filing
`Party
`Petitioner Available for
`everyone.
`Petitioner Available for
`everyone.
`Available to
`filing party and
`board.
`
`Petitioner
`
`Questions regarding this receipt should be directed to the Patent Trial and Appeal
`Board at 571-272-7822 or e-mail to Trials@uspto.gov.
`
`This e-mail is computer-generated. Do not reply to this e-mail because the e-mail
`box is not monitored.
`
`
`
`
`
`
`
`
`
`
`
`For docketing purposes of patent & trademark matters only, please add the
`appropriate email of dwpatents@dickinsonwright.com or
`dwtrademarks@dickinsonwright.com to any emails being sent to our
`office. Thank you.
`
`
`
`Steven R. Daniels Member
`
`303
`Phone 512-770-4231
`Colorado
`Fax
`844-670-6009
`St.
`Email SDaniels@dickinsonwright.com
`Suite
`2050
`Austin
`TX
`78701
`
`
`
`
`
`
`
`
`
`From: Trials <Trials@USPTO.GOV>
`Sent: Thursday, June 14, 2018 1:07 PM
`To: Trials <Trials@USPTO.GOV>; Steven R. Daniels <SDaniels@dickinson-
`wright.com>
`Cc: edward@neustel.com
`Subject: RE: IPR2017-01909/01911 Barco v. T-Rex
`
`Counsel,
`
`The Board has reviewed the joint motions to dismiss filed in these proceedings.
`
`
`
`
`The parties are reminded that any agreement or understanding between the
`patent owner and the petitioner, including any collateral agreements referred to
`in such agreement or understanding, made in connection with, or in
`contemplation of, the termination of the proceedings shall be in writing, and a
`true copy of that agreement or understanding shall be filed in the Office. 35
`U.S.C. § 317(b).
`
`In order to ensure compliance with 35 U.S.C. § 317(b), and based on the facts of
`these proceedings, the parties are required to certify in writing that there are
`no other written or oral agreements or understandings, including any
`collateral agreements, between them, including but not limited to licenses,
`covenants not to sue, confidentiality agreements, payment agreements, or other
`agreements of any kind, that are made in connection with, or in contemplation of,
`the termination of the proceedings.
`
`To the extent that there are other agreements as outlined immediately above, the
`parties shall file such agreements and may request that any such agreement be
`treated as business confidential information and be kept separate from the
`files of the involved patent. 37 C.F.R. § 42.74(c).
`
`Regards,
`
`Andrew Kellogg,
`Supervisory Paralegal
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`Direct: 571-272-5366
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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