Trials
`Trials; David Hecht
`Jim Glass; Marissa Ducca; seangloth@quinnemanuel.com; James Zak
`RE: IPR2021-01438 IPR2021-01439 - Auth for Motions to Terminate
`Wednesday, February 22, 2023 8:17:43 AM
`
`From:
`To:
`Cc:
`Subject:
`Date:
`
`Counsel,
`
`From the Board -
`
`Under 35 U.S.C. § 317(b), "[a]ny agreement or understanding between the patent owner and a petitioner, including
`any collateral agreements referred to in such agreement or understanding, made in connection with, or in
`contemplation of, the termination of an inter partes review under this section shall be in writing, and a true copy of
`such agreement or understanding shall be filed in the Office before the termination of the inter partes review as
`between the parties."
`
`Similarly, 37 C.F.R. § 42.74(b) requires that “[a]ny agreement or understanding between the parties made in
`connection with, or in contemplation of, the termination of a proceeding shall be in writing and a true copy shall be
`filed with the Board before the termination of the trial.”
`
`In the Joint Motion to Terminate, the parties represent that the "Binding Term Sheet" "fully" resolves the matter, and
`that there are "no other agreements, oral or written, between the parties made in connection with, or in
`contemplation of, the termination of the present Proceeding." Joint Motion to Terminate, 1. However, the Binding
`Term Sheet indicates that the parties will enter into a definitive agreement within 20 days of the signing of the
`Binding Term Sheet. The parties are requested to confirm that the Binding Term Sheet as filed "fully" resolves the
`matter, and that there are no other agreements between the parties made in connection with the termination of the
`present Proceeding pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b). If the parties have entered into a
`definitive agreement, the parties are requested to submit that agreement consistent with Section 317(b).
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`(571) 272-7822
`
`-----Original Message-----
`From: Trials <Trials@USPTO.GOV>
`Sent: Friday, January 20, 2023 8:19 AM
`To: David Hecht <dhecht@hechtpartners.com>
`Cc: Jim Glass <jimglass@quinnemanuel.com>; Marissa Ducca <marissaducca@quinnemanuel.com>;
`seangloth@quinnemanuel.com; James Zak <jzak@hechtpartners.com>; Trials <Trials@USPTO.GOV>
`Subject: RE: IPR2021-01438 IPR2021-01439 - Auth for Motions to Terminate
`
`Counsel,
`
`From the Board -
`
`The parties are authorized to file joint motions to terminate the above-identified proceedings pursuant to 35 U.S.C. §
`317(a) and joint motions to keep any agreement filed in support thereof confidential pursuant to 37 CFR 42.74(c).
`The motions should be filed no later than February 14, 2023.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`
`

`

`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`(571) 272-7822
`
`-----Original Message-----
`From: David Hecht <dhecht@hechtpartners.com>
`Sent: Thursday, January 19, 2023 3:35 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Jim Glass <jimglass@quinnemanuel.com>; Marissa Ducca <marissaducca@quinnemanuel.com>;
`seangloth@quinnemanuel.com; James Zak <jzak@hechtpartners.com>
`Subject: IPR2021-01438 IPR2021-01439 - Auth for Motions to Terminate
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE
`before responding, clicking on links, or opening attachments.
`
`Dear Honorable Board,
`
`The Parties respectfully request authorization to file joint motions to terminate the above-identified proceedings
`under 35 § 317(a) due to Settlement, as well as joint requests that any settlement agreement filed in support thereof
`be treated as business confidential under 37 C.F.R. 42.74(c)
`
`Sincerely,
`
`David Hecht
`
`David L. Hecht
`Hecht Partners LLP
`>
`
`