Trials@uspto. gov
`571-272-7822
`
`Paper13
`Entered: May 2, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`IAPARTMENTS, INC.,
`Petitioner,
`
`V.
`
`EDST LLC,
`Patent Owner.
`
`IPR2022-01468 (Patent 10,825,273 B2)
`IPR2022-01469 (Patent 10,803,685 B2)
`PGR2022-00059 (Patent 11,189,118 B2)
`
`Before ST. JOHN COURTENAYII, KEVIN W. CHERRY,and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`CHERRY,Administrative Patent Judge.
`
`TERMINATION
`Dueto Settlement After Institution of Trial
`35 U.S.C. § 327; 37 CFE-.R. $42.74
`
`
`571-272-7822
`
`Paper13
`Entered: May 2, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`IAPARTMENTS, INC.,
`Petitioner,
`
`V.
`
`EDST LLC,
`Patent Owner.
`
`IPR2022-01468 (Patent 10,825,273 B2)
`IPR2022-01469 (Patent 10,803,685 B2)
`PGR2022-00059 (Patent 11,189,118 B2)
`
`Before ST. JOHN COURTENAYII, KEVIN W. CHERRY,and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`CHERRY,Administrative Patent Judge.
`
`TERMINATION
`Dueto Settlement After Institution of Trial
`35 U.S.C. § 327; 37 CFE-.R. $42.74
`
`
`
`IPR2022-01468 (Patent 10,825,273 B2)
`IPR2022-01469 (Patent 10,803,685 B2)
`PGR2022-00059 (Patent 11,189,118 B2)
`
`£
`
`INTRODUCTION
`
`On April 21, 2023, with Board authorization from an e-mail sent on
`
`April 12, 2023, the parties filed a “Jomt Motion to Terminate Proceedings”
`
`in each proceeding. Paper 111 (“Mot.”’). Along with the Joint Motion, the
`
`parties filed a copy of a “Settlement and License Agreement” (“Agreement,”
`
`Ex. 1022). The parties describe the Agreement in Exhibit 1022, and a
`
`Memorandum ofUnderstanding in Exhibit 1023, as “true and correct
`
`copies,” andassert that “[t]here are no other agreements,oral or written,
`
`betweenthe parties made in connection with, or in contemplation of, the
`
`termination of the proceeding.” Mot. 1. The parties further assert that they
`
`“havesettled their dispute,” and also state that the “Parties desire the
`
`Settlement and License Agreement and Memorandum ofUnderstanding be
`
`maintained as business confidential under 37 C.F.R. §42.74(c).” /d. at 1-2.
`
`To that end, the parties filed a “Joint Request To Keep Settlement And
`
`License Agreement And Memorandum OfUnderstanding Confidential And
`
`Separate Under 37 C.F.R. §42.74(c).” Paper 12.
`
`Hh
`
`DISCUSSION
`
`Weinstituted a trial on April 11, 2023, in each of the proceedings.
`
`Paper 9. We havenotyet decided the merits of any of the proceedings, and
`
`final written decisions have not been entered.
`
`Notwithstanding that the proceedings have moved beyondthe
`
`preliminary stage in each proceeding, the Parties have shown adequately that
`
`' Unless stated otherwise, we refer to papers and exhibits in IPR2022-01468.
`Essentially identical papers werefiled in [PR2022-01469 and PGR2022-
`00059.
`
`
`
`IPR2022-01468 (Patent 10,825,273 B2)
`IPR2022-01469 (Patent 10,803,685 B2)
`PGR2022-00059 (Patent 11,189,118 B2)
`
`the terminations of the proceedings are appropriate. Under these
`
`circumstances, we determine that good cause exists to terminate the
`
`proceedings with respect to the Parties. We also have reviewed the
`
`settlement agreement, and we determinethat the settlement agreement and
`
`memorandum each contains business confidential information regarding the
`
`termsof the settlement, and that good causeexists to treat the settlement
`
`agreement and memorandum asbusinessconfidential information under 37
`
`C.F.R. § 42.74(c).
`
`This Order doesnot constitute a final written decision pursuant to
`
`35 U.S.C. §318(a).
`
`
`
`IPR2022-01468 (Patent 10,825,273 B2)
`IPR2022-01469 (Patent 10,803,685 B2)
`PGR2022-00059 (Patent 11,189,118 B2)
`
`HE ORDER
`
`In consideration of the foregoing,it is hereby:
`
`ORDEREDthatthe parties’ Joint Request (Paper 12), in IPR2022-
`
`01468, to treat the Settlement and License Agreement (Exhibit 1022), and
`
`Memorandum ofUnderstanding (Exhibit 1023), the parties’ Joint Request
`
`(Paper 12), in IPR2022-01469, to treat the Settlement and License
`
`Agreement (Exhibit 1023), and Memorandum ofUnderstanding (Exhibit
`
`1024), and the parties’ Jomt Request (Paper 12), in PGR2022-00059, to treat
`
`the Settlement and License Agreement (Exhibit 1024), and Memorandum of
`
`Understanding (Exhibit 1025), as business confidential information under 37
`
`C.F.R. § 42.74(c) are granted, and the two exhibits in each proceeding shall
`
`be kept separate from thefiles of Patents 10,824,273 B2, 10,803,685 B2, and
`
`11,189,118 B2, respectively, and madeavailable only to Federal
`
`Governmentagencies on written request, or to any person on a showing of
`
`good cause, pursuant to 35 U.S.C. § 327(b) and 37 C.F.R. §42.74(c);
`
`FURTHER ORDEREDthatthe parties’ Joint Motion to Dismiss
`
`(Paper 11) in each proceeding is granted, and each proceeding is terminated
`
`with respect to Petitioner and Patent Owner, pursuant to 37 C.F.R. § 42.72.
`
`
`
`IPR2022-01468 (Patent 10,825,273 B2)
`IPR2022-01469 (Patent 10,803,685 B2)
`PGR2022-00059 (Patent 11,189,118 B2)
`
`PETITIONER:
`
`Gregory Gerwitz
`Jonathan David
`Wilfred Patrick
`David Leach
`LERNER, DAVID, LITTENBERG, KRUMHOLZ & MENTLIK, LLP
`ggewirtz. ipr@ldikm.com
`jdavid@lernerdavid.com
`wpatrick@lernerdavid.com
`dleach@lernerdavid.com
`
`FOR PATENT OWNER:
`
`Joshua Griswold
`Kenneth Darby
`Kim Leung
`FISH& RICHARDSON P.C,
`IPR54577-0005IP 1 @fr.com
`IPR54577-0006IP 1 @fr.com
`IPR54577-0007PS1 @fr.com
`PTABInbound@fr.com
`eriswold@fr.com
`kdarby@fr.com
`leung@fr.com
`
`Eagle H. Robinson
`Robert Greeson
`Erik Janitens
`Lu Ling
`NORTON ROSE FULBRIGHT US LLP
`eagle. robinson@nortonrosefulbright.com
`robert. greeson@nortonrosefulbright.com
`erik.janitens@nortonrosefulbright.com
`lu. ing@nortonrosefulbright.com
`
`
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