`571-272-7822
`
`
`
`
`Paper 22
`Entered: March 7, 2022
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`BANK OF AMERICA, N.A.
`Petitioner,
`
`v.
`
`NANT HOLDINGS IP, LLC,
`Patent Owner.
`_______________
`
`IPR2021-01080
`Patent 8,463,030 B2
`____________
`
`
`
`
`Before JAMESON LEE, THOMAS L. GIANNETTI, and
`STEPHEN E. BELISLE, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`
`TERMINATION
`Settlement After Institution of Trial
`37 C.F.R. § 42.74
`
`
`
`
`
`IPR2021-01080
`Patent 8,463,030 B2
`
`
`I. BACKGROUND
`
`Bank of America, N.A. (“Petitioner”) filed a Corrected Petition
`
`requesting inter partes review of claims 1–4, 6, 7, 19, 21, 25, 26, 29–32, 36,
`
`and 37 of U.S. Patent No. 8,463,030 B2 (Ex. 1001, “the ’030 patent”).
`
`Paper 9. Nant Holdings IP, LLC (“Patent Owner”) filed a Preliminary
`
`Response. Paper 10.
`
`The Board determined that Petitioner established a reasonable
`
`likelihood that it would prevail with respect to at least one challenged claim,
`
`and instituted inter partes review as to all of the challenged claims of the
`
`’030 patent and all of the asserted grounds of unpatentability stated in the
`
`Petition. Paper 14.
`
`II. DISCUSSION
`
`After institution, with Board authorization, Petitioner and Patent
`
`Owner filed a “Joint Motion to Terminate Inter Partes Review Proceeding”
`
`(Paper 21, “Joint Motion to Terminate”). The parties represent that Patent
`
`Owner has agreed to (a) dismiss all allegations of infringement relating to
`
`the ’030 patent with prejudice, and (b) execute a covenant not to sue relating
`
`to the ’030 patent. Paper 21, 1. Further, the parties state that Petitioner has
`
`agreed to dismiss its counterclaims relating to the ’030 patent with prejudice
`
`in the pending district court action involving the ’030 patent and to submit a
`
`joint motion to terminate this inter partes review proceeding. Id. The
`
`parties certify that they have complied fully with 37 C.F.R. § 42.74(b) by
`
`filing the agreement, reflected in Exhibit 1046 (a stipulated motion to
`
`dismiss filed with the district court) with the Board, which agreement
`
`reflects final settlement and resolution of all disputes relating to the
`
`’030 patent between the parties, and that there are no other collateral
`
`2
`
`
`
`IPR2021-01080
`Patent 8,463,030 B2
`
`agreements or understandings made in connection with, or in contemplation
`
`of, the termination sought. Id. at 3.1
`
`The parties represent that the district court action involving the
`
`’030 patent has been dismissed and the parties contemplate no litigation or
`
`proceeding involving the challenged patent in the foreseeable future. Id.
`
`This trial is at an early stage. Patent Owner has not filed a response.
`
`At this early stage, we determine that termination is warranted for the
`
`reasons stated in the Joint Motion to Terminate.
`
`
`
`III. ORDER
`
`In consideration of the foregoing, it is hereby
`
`ORDERED that the parties’ Joint Motion to Terminate is granted and
`
`this case is terminated.
`
`
`
`FOR PETITIONER:
`
`Dustin J. Edwards
`Michael A. Tomasulo
`WINSTON & STRAWN LLP
`dedwards@winston.com
`mtomasulo@winston.com
`
`
`
`FOR PATENT OWNER:
`
`James M. Glass
`Todd M. Briggs
`QUINN EMANUEL URQUHART
`& SULLIVAN LLP
`jimglass@quinnemanuel.com
`toddbriggs@quinnemanuel.com
`
`
`1 Only the first page of the Joint Motion to Terminate is numbered.
`
`3
`
`
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