`571-272-7822
`
`Paper 14
`Date: June 28, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ADOBE INC.,
`Petitioner,
`v.
`SYNKLOUD TECHNOLOGIES, LLC,
`Patent Owner.
`
`IPR2020-01301
`Patent 9,219,780 B2
`
`
`Before SALLY C. MEDLEY, LYNNE E. PETTIGREW, and
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`
`SAWERT, Administrative Patent Judge.
`
`
`
`
`TERMINATION
`Due to Settlement After Institution of Trial
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2020-01301
`Patent 9,219,780 B2
`
`
`I.
`INTRODUCTION
`On our authorization (Ex. 3001), the parties filed a Joint Motion to
`terminate this proceeding under 35 U.S.C. § 317 and 37 C.F.R. § 42.72.
`Paper 12 (“Motion” or “Mot.”). The parties also filed what they indicate is a
`true and correct copy of their Settlement Agreement and Covenant Not-To-
`Sue. Ex. 2042 (“Settlement Agreement”). In a Joint Request, the parties
`identified the Settlement Agreement as business confidential information
`and requested that the Settlement Agreement be kept separate from the
`patent file. Paper 13 (“Joint Request”). For the reasons discussed below,
`the Motion and Joint Request are granted.
`II. ANALYSIS
`We have not decided the merits of this proceeding. The parties
`indicate that they have settled their disputes regarding U.S. Patent
`No. 9,219,780 B2. Mot. 2. The parties represent that they submitted “the
`Parties’ settlement agreement and any collateral agreements made in
`contemplation of termination of the proceedings.” Id. at 3. Under these
`circumstances, we determine that it is appropriate to terminate this
`proceeding. See 37 C.F.R. § 42.72. We also determine that it is appropriate
`to treat the Settlement Agreement as business confidential information to be
`kept separate from the patent file. See 37 C.F.R. § 42.74(c).
`
`
`
`2
`
`
`
`IPR2020-01301
`Patent 9,219,780 B2
`
`
`III. ORDER
`
`It is hereby:
`ORDERED that the Motion to terminate this inter partes review
`proceeding is granted;
`FURTHER ORDERED that this proceeding is terminated as to all
`parties; and
`FURTHER ORDERED that the Joint Request to treat the Settlement
`Agreement (Ex. 2042) as business confidential information to be kept
`separate from the patent file is granted.
`
`
`3
`
`
`
`IPR2020-01301
`Patent 9,219,780 B2
`
`For PETITIONER:
`
`James L. Day
`Winston Liaw
`Daniel Callaway
`FARELLA BRAUN + MARTEL LLP
`jday@fbm.com
`wliaw@fbm.com
`dcallaway@fbm.com
`
`
`For PATENT OWNER:
`
`Gregory JGonsalves
`Yeasun Yoon
`CAPITOL IP LAW GROUP, PLLC
`gonsalves@capitoliplaw.com
`yoon@capitoliplaw.com
`
`
`4
`
`
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