Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`Paper 9
`Entered: January 28, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SNAP INC.,
`Petitioner,
`v.
`PIXMARX IP LLC,
`Patent Owner.
`____________
`
`IPR2021-00140 (Patent 9,477,689 B2)
`IPR2021-00141 (Patent 9,792,662 B2)
`IPR2021-00142, IPR2021-00232 (Patent 10,102,601 B2)
`IPR2021-00143, IPR2021-00233 (Patent 10,489,873 B2)
`____________
`
`
`Before BARBARA A. PARVIS, MICHELLE N. WORMMEESTER, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`Per Curiam.
`
`
`DECISION
`Settlement Prior to Institution of Trial
`37 C.F.R. § 42.74
`
`
`
`
`571.272.7822
`
`
`
`
`
`Paper 9
`Entered: January 28, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SNAP INC.,
`Petitioner,
`v.
`PIXMARX IP LLC,
`Patent Owner.
`____________
`
`IPR2021-00140 (Patent 9,477,689 B2)
`IPR2021-00141 (Patent 9,792,662 B2)
`IPR2021-00142, IPR2021-00232 (Patent 10,102,601 B2)
`IPR2021-00143, IPR2021-00233 (Patent 10,489,873 B2)
`____________
`
`
`Before BARBARA A. PARVIS, MICHELLE N. WORMMEESTER, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`Per Curiam.
`
`
`DECISION
`Settlement Prior to Institution of Trial
`37 C.F.R. § 42.74
`
`
`
`
`
`IPR2021-00140 (Patent 9,477,689 B2)
`IPR2021-00141 (Patent 9,792,662 B2)
`IPR2021-00142, IPR2021-00232 (Patent 10,102,601 B2)
`IPR2021-00143, IPR2021-00233 (Patent 10,489,873 B2)
`
`
`I. INTRODUCTION
`In each of the above-captioned proceedings, Petitioner and Patent Owner
`(collectively “the Parties”) filed a joint motion to terminate, or in the alternative to
`dismiss, the proceeding. Paper 7 (“Joint Motion”). 1 In support of the Joint
`Motion, the Parties filed a copy of a written confidential settlement agreement.
`Ex. 1044 (“Settlement Agreement”). The Parties also filed a joint request to keep
`the Settlement Agreement separate. Paper 6 (“Joint Request”). We authorized the
`filing of these papers in an e-mail sent on January 25, 2021.
`II. DISCUSSION
`In the Joint Motion, the Parties state that they have settled with respect to the
`challenged patents and have reached an agreement to jointly seek termination of
`the proceedings. Joint Motion 1. The Parties also state that the Settlement
`Agreement is “the written agreement that contemplates the termination of th[e]
`proceeding[s]” and that, “[a]side from this written agreement concurrently filed
`with the Board, there are no other agreements, oral or written, between the parties
`and made in connection with, or in contemplation of, the termination of the
`proceeding[s].” Joint Motion 3.
`There are strong public policy reasons to favor settlement between the
`parties to a proceeding. Office Patent Trial Practice Guide, 84 Fed. Reg. 64,280
`(Nov. 21, 2019). These proceedings are in the preliminary phase, and we have not
`yet decided whether to institute trials in the proceedings. In view of the early stage
`of the proceedings and the settlement between the Parties, we determine that it is
`
`1 We refer to papers and evidence filed in IPR2021-00140. The parties filed the
`Settlement Agreement and similar motions in the other cases to which this Order
`pertains.
`
`2
`
`
`
`IPR2021-00140 (Patent 9,477,689 B2)
`IPR2021-00141 (Patent 9,792,662 B2)
`IPR2021-00142, IPR2021-00232 (Patent 10,102,601 B2)
`IPR2021-00143, IPR2021-00233 (Patent 10,489,873 B2)
`
`appropriate to dismiss the petitions and terminate the proceedings as to the Parties,
`without rendering decisions on institution or final written decisions.
`In the Joint Request, the Parties jointly request to have the Settlement
`Agreement be treated as business confidential information and be kept separate
`from the files of the patents involved in these proceedings. Joint Request 1.
`After reviewing the Settlement Agreement between the Parties, we find that
`the Settlement Agreement contains confidential business information regarding the
`terms of settlement. We determine the Settlement Agreement between the Parties
`shall be treated as business confidential information under 37 C.F.R. § 42.74(c)
`and shall be kept separate from the files of the involved patents and associated
`proceedings.
`The Parties also “request that the Board order that in the event a person or
`entity makes a written request, as stated in 37 C.F.R. § 42.74(c)(1)-(2), for access
`to the Settlement Agreement, that any such written request be served upon the
`parties on the day the written request is provided to the Board.” Joint Request 1.
`We will not impose such a requirement, which is not recited in the governing
`regulation (37 C.F.R. § 42.74). Therefore, the Parties’ request in this regard is
`denied.
`This Order does not constitute a final written decision pursuant to 35 U.S.C.
`§ 318(a).
`
`III. ORDER
`
`Accordingly, it is:
`ORDERED that the Joint Motion is granted;
`FURTHER ORDERED that the above-captioned proceedings are terminated
`and the petitions are dismissed; and
`
`3
`
`
`
`IPR2021-00140 (Patent 9,477,689 B2)
`IPR2021-00141 (Patent 9,792,662 B2)
`IPR2021-00142, IPR2021-00232 (Patent 10,102,601 B2)
`IPR2021-00143, IPR2021-00233 (Patent 10,489,873 B2)
`
`
`FURTHER ORDERED that the Settlement Agreement shall remain
`designated as “Parties and Board Only” in the Board’s filing system, shall be made
`available only to Federal Government agencies on written request, or to any person
`on a showing of good cause, and shall be kept separate from the files of the
`involved patents and associated proceedings, pursuant to 37 C.F.R. § 42.74(c).
`
`4
`
`
`
`IPR2021-00140 (Patent 9,477,689 B2)
`IPR2021-00141 (Patent 9,792,662 B2)
`IPR2021-00142, IPR2021-00232 (Patent 10,102,601 B2)
`IPR2021-00143, IPR2021-00233 (Patent 10,489,873 B2)
`
`For PETITIONER:
`
`Daniel Yannuzzi
`Eric Gill
`Evan Sumner
`SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
`dyannuzzi@sheppardmullin.com
`egill@sheppardmullin.com
`esumner@sheppardmullin.com
`
`
`
`For PATENT OWNER:
`
`Jonathan Szarzynski
`SZARZYNSKI PLLC
`jon@szarzynski.com
`
`
`
`5
`
`
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