`To:
`Cc:
`Subject:
`
`Date:
`Attachments:
`
`Trials
`Tyson, Christopher J.; Trials
`McPherson, Patrick D.; Belnap, Paul H.; Cronin, James; Turner, Colin W.; Pollmann, Jonathan
`RE: IPR2021-01508; IPR2021-01509; and IPR2021-01510— Settlement and Joint Request to File Joint Motion to
`Terminate and Joint Request to Keep Separate
`Wednesday, February 16, 2022 9:28:00 AM
`image001.png
`
`Counsel:
`
`No conference call is necessary. The parties are authorized to file, in each proceeding, a joint
`motion to dismiss the Petition. See 37 C.F.R. § 42.71(a); see, e.g., Materialise N.V. v. Osteoplastics,
`LLC, IPR2021-00245, Paper 12 (PTAB June 4, 2021) (dismissing prior to institution of trial).
`Please note that the parties must file executed copies of the settlement agreements in this
`process.
`
`The motions shall be filed no later than February 22, 2022, and shall otherwise comply with the
`Board’s rules.
`
`Thank you,
`
`Maria King
`Deputy Chief Clerk for Trials
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`703-756-1288
`
`
`
`
`From: Tyson, Christopher J. <CJTyson@duanemorris.com>
`Sent: Tuesday, February 15, 2022 2:02 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: McPherson, Patrick D. <PDMcPherson@duanemorris.com>; Belnap, Paul H.
`<PHBelnap@duanemorris.com>; Cronin, James <james.cronin@stinson.com>; Turner, Colin W.
`<colin.turner@stinson.com>; Pollmann, Jonathan <jonathan.pollmann@stinson.com>
`Subject: IPR2021-01508; IPR2021-01509; and IPR2021-01510— Settlement and Joint Request to File
`Joint Motion to Terminate and Joint Request to Keep Separate
`
`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,
`
`Petitioner NV5, Inc. and Patent Owner Terracon Consultants, Inc. (hereinafter “the Parties”) have
`reached a settlement resolving their the disputes with regard to the patents challenged in the above
`captioned inter partes reviews.
`
`
`IPR2021-01508 to -01510
`
`1
`
`Ex. 3001
`
`
`
`In light of this settlement, the Parties jointly request permission to file, in each IPR proceeding, a: (i)
`Joint Motion to Terminate, and (ii) Joint Request to Keep Separate their settlement agreement.
`
`Should the Board wish to discuss this matters, the Parties are available for a teleconference at the
`following times:
`
`• Wednesday, February 16th from 10:30 am to 12 pm ET, and 1:30 to 6:00 pm ET
`• Thursday, February 17th from 10:30 to 11:00 am ET, and 2:30 to 6:00 PM ET
`• Friday, February 18th from 2:00 pm to 6:00 pm ET.
`
`Best regards,
`Chris Tyson
`
`Lead Counsel for Petitioner NV5, Inc.
`
`Christopher J. Tyson
`Partner
`
`Duane Morris LLP
`505 9th Street, N.W., Suite 1000
`Washington, DC 20004-2166
`P: +1 202 776 7851
`F: +1 202 478 2620
`
`cjtyson@duanemorris.com
`www.duanemorris.com
`
`For more information about Duane Morris, please visit http://www.DuaneMorris.com
`
`Confidentiality Notice: This electronic mail transmission is privileged and confidential and is intended only for the review of the party to
`whom it is addressed. If you have received this transmission in error, please immediately return it to the sender. Unintended transmission
`shall not constitute waiver of the attorney-client or any other privilege.
`
`IPR2021-01508 to -01510
`
`2
`
`Ex. 3001
`
`
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