`571-272-7822
`
`
`
`
`
`
`
`
`
` Paper 9
`
`
`
`
` Entered: February 2, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTEL CORPORATION,
`Petitioner,
`v.
`UNM RAINFOREST INNOVATIONS,
`Patent Owner.
`____________
`
`IPR2020-01576 (Patent 8,265,096 B2)
`IPR2020-01578 (Patent 8,249,204 B2)1
`____________
`
`
`
`
`
`
`Before KRISTEN L. DROESCH, BARBARA A. PARVIS, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`
`DROESCH, Administrative Patent Judge.
`
`
`
`DECISION
`Settlement Prior to Institution of Trial
`37 C.F.R. § 42.74
`
`
`
`
`1 This order is being filed in each proceeding listed in the caption. The
`parties, however, are not authorized to use this style of filing in subsequent
`papers, without prior authorization.
`
`
`
`IPR2020-01576 (Patent 8,265,096 B2)
`IPR2020-01578 (Patent 8,249,204 B2)
`Pursuant to authorization by the Board, the parties filed in each above-
`identified proceeding the following: (1) a joint motion to terminate the
`proceeding (Paper 6, “Joint Motion to Terminate,” “Mot.”) 2; (2) a true copy
`of the parties’ settlement agreement (IPR2020-001576 Ex. 1028,
`IPR2020-01578 Ex. 1021); and (3) a joint request that the settlement
`agreement be treated as business confidential information and to keep
`separate pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (Paper 7,
`“Request”).
`The parties contend that “[t]ermination of this proceeding is proper for
`at least the following reasons: The parties are jointly requesting termination.
`. . . The Board has not yet ‘decided the merits of the proceeding before the
`request for termination is filed.’ . . . Patent Owner has withdrawn the
`claims against accused products containing Intel Wi-Fi products in the
`District court . . . .” Mot. 2. The parties indicate “[t]he settlement
`agreement between the parties has been made in writing, and a true and
`correct copy will be filed with this request.” Id. at 6. The parties state that
`“[t]here are no other agreements, oral or written, between the parties made in
`connection with, or in contemplation of, the termination of this proceeding.
`See id. In addition, each of these proceedings is in an early stage. We have
`not yet determined whether a trial should be instituted in these proceedings.
`Upon review of the facts before us and consideration of the early stage
`of these proceedings, we determine it is appropriate to terminate these IPR
`
`
`2 For the purpose of expediency, we refer to the papers filed in IPR2020-
`01576. Similar papers were filed in IPR2020-01578.
`2
`
`
`
`IPR2020-01576 (Patent 8,265,096 B2)
`IPR2020-01578 (Patent 8,249,204 B2)
`proceedings. See 37 C.F.R. §§ 42.2, 42.72. In addition, we have reviewed
`the true copy of the parties’ settlement agreement (IPR2020-01576
`Ex. 1028, IPR2020-01578 Ex. 1021) and determine that good cause exists to
`treat the settlement agreement as business confidential information and to
`keep it separate from the files of Patent 8,265,096 and Patent 8,249,204
`pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Request (Paper 7) to treat the settlement
`agreement (IPR2020-01576 Ex. 1028, IPR2020-01578 Ex. 1021) as business
`confidential information and to keep it separate from the files of the
`involved patents pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is
`granted;
`FURTHER ORDERED that the settlement agreement
`(IPR2020-01576 Ex. 1028, IPR2020-01578 Ex. 1021) accordingly shall be
`treated as business confidential information, kept separate from the files of
`the involved patents, and made available only to Federal Government
`agencies on written request to the Board, or to any person on a showing of
`good cause, under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(c); and
`FURTHER ORDERED that the Joint Motion to Terminate (Paper 6)
`is granted, and the proceedings in IPR2020-01576 and IPR2020-01578 are
`terminated.
`
`
`3
`
`
`
`IPR2020-01576 (Patent 8,265,096 B2)
`IPR2020-01578 (Patent 8,249,204 B2)
`
`
`
`
`PETITIONER:
`
`Christian McCullough
`Lauren Eaton
`PERKINS COIE LLP
`Mccullough-ptab@perkinscoie.com
`Eaton-ptab@perkinscoie.com
`
`PATENT OWNER:
`Jay Kesan
`DiMUROGRINSBERG, PC
`jay@jaykesan.com
`Alfonso Chan
`Ari Rafilson
`SHORE CHAN DePUMPO LLP
`achan@shorechan.com
`arafilson@shorechan.com
`
`
`
`
`4
`
`
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