Before THU A. DANG, DAVID C. MCKONE, and NORMAN H. BEAMER, Administrative Patent Judges.

With the Board’s authorization, Petitioner and Patent Owner (collectively referred to as “the Parties”) filed a Joint Motion to Terminate Inter Partes Review Proceeding Pursuant to 35 U.S.C. §317(a) and 37 C.F.R. § 42.74 due to settlement.

In the Joint Motion, the Parties represent that they have reached an agreement to jointly seek termination of the above-identified inter partes review proceeding and have settled their dispute regarding “Patent Owner’s assertion of U.S. Patent No. 10,073,960 in the related district court litigation, Proxense v. Google LLC and Google Payment Corp., Civil Action No. 6:23- cv-320 in the United States District Court for the Western District of Texas.” Mot.

We determine that good cause exists to treat the Settlement Agreement between Petitioner and Patent Owner as business confidential information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).

In view of the above, it is ORDERED that the Joint Motion to Terminate Inter Partes Review Proceeding Pursuant to 35 U.S.C. §317(a) and 37 C.F.R. § 42.74 (Paper 14) is granted, and IPR2024-00784 is terminated with respect to Petitioner and Patent Owner pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72; and FURTHER ORDERED that the Joint Request to Treat Settlement Agreement as Business Confidential Information Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (Paper 15) is granted-in-part and denied- in-part in the manner noted above, and the Settlement Agreement shall be kept separate from the file of Patent 10,073,960 B1, and made available only to Federal Government agencies on written request, or to any person on a showing of good cause, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).

Before THU A. DANG, DAVID C. MCKONE, and NORMAN H. BEAMER Administrative Patent Judges.

Petitioner also acknowledges that it previously filed a petition (“Original Petition”) for inter partes review of claims 1–20 of the ’960 patent in IPR2024-00784.

Accordingly, the condition on which Petitioner’s Petition and Motion for Joinder is based, i.e., “in abeyance until, and only if, the Board declines to institute [in IPR2024-00784],” has not come to pass.

Here, Petitioner acknowledges that it “has two concurrent petitions challenging the validity of the same patent.” Notice 1.

Since, as discussed above, the Board has instituted an inter partes review of the ’960 patent in IPR2024-00784, we deny the Petition and the Motion for Joinder in the current IPR.

For example, reasonable expenses and attorneys’ fees incurred by any party may be levied on a person who impedes, delays, or frustrates the fair examination of a witness.

To satisfy this requirement, Patent Owner should request a conference call with the Board no later than two weeks prior to DUE DATE 1.

At DUE DATE 5, Petitioner may file a sur-reply that is limited to responding to the preliminary guidance and/or arguments made in the patent owner’s reply brief.

The Board defines a LEAP practitioner as a patent agent or attorney having three (3) or fewer substantive oral arguments in any federal tribunal, including PTAB.

All practitioners are expected to have a command of the factual record, the applicable law, and Board procedures, as well as the authority to commit the party they represent.