Ironworks Patents, LLC

Patent Trials and Appeals BoardNov 9, 2021

IPR2021-00421 (P.T.A.B. Nov. 9, 2021)

Trials@uspto.gov Paper 25 571-272-7822 Entered: November 9, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD MOTOROLA MOBILITY LLC, Petitioner, v. IRONWORKS PATENTS, LLC, Patent Owner. ____________ IPR2021-00420 (Patent 6,850,150 B1) IPR2021-00421 (Patent 9,521,269 B2)1 Before THU A. DANG, JONI Y. CHANG, and LYNNE E. PETTIGREW, Administrative Patent Judges. CHANG, Administrative Patent Judge. TERMINATION Due to Settlement After Institution of Trial 35 U.S.C. § 317; 37 C.F.R. § 42.74 1 This Order is filed in each proceeding listed in the caption. The parties, however, are not authorized to use this style of filing in subsequent papers, without prior authorization. IPR2021-00420 (Patent 6,850,150 B1) IPR2021-00421 (Patent 9,521,269 B2) 2 In each instant proceeding, Petitioner and Patent Owner jointly move to terminate inter parte review in light of their settlement that resolves their dispute regarding the patents at issue. Paper 24 (“Mot.”).2 The parties also filed a true copy of their written settlement agreement in connection with the termination as required by 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), in each instant proceeding. Ex. 2012. Pursuant to 37 C.F.R. § 42.74(c), the parties additionally filed a joint request to treat the Settlement Agreement as business confidential information kept separate from the file of the involved patent, in each instant proceeding. Paper 25. Generally, the Board expects that a proceeding will terminate after the filing of a settlement agreement. See Consolidated Trial Practice Guide3 at 86; see also 84 Fed. Reg. 64,280 (Nov. 21, 2019). Here, the parties indicate that their Settlement Agreement ends all disputes between the parties, including their dispute relating to the patents at issue in the instant proceedings. Mot. 2. In each Joint Motion to Terminate, “[t]he parties jointly certify that aside from the settlement agreement the parties are filing, there are no collateral agreement or understandings made in connection with, or in contemplation of, the termination of this proceeding.” Id. at 1. Although the instant inter partes reviews have been instituted, these proceedings are still in the briefing stage. Patent Owner has not filed its Reponse and Sur-reply, and Petitioner has not filed its Reply. We also have not yet held an oral hearing and have not entered a final written decision in either of these proceedings. 2 For purposes of expediency, we refer to the papers and exhibits filed in IPR2021-00420. Similar papers and exhibits were filed in IPR2021-00421. 3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. IPR2021-00420 (Patent 6,850,150 B1) IPR2021-00421 (Patent 9,521,269 B2) 3 Upon review of the procedural posture of these proceedings and the facts before us, we determine that the parties’ requests have merit and that it is appropriate to terminate these proceedings and enter judgment without rendering a final written decision in each instant proceeding. See 35 U.S.C. § 317(a); 37 C.F.R. §§ 42.2, 42.72. In consideration of the foregoing, it is hereby ORDERED that the Joint Motions to Terminate filed in these proceedings are granted; and FURTHER ORDERED that the Joint Requests to File Settlement Agreement as Business Confidential Information and to keep such settlement agreement separate from the patent files, and to make it 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), are granted. IPR2021-00420 (Patent 6,850,150 B1) IPR2021-00421 (Patent 9,521,269 B2) 4 PETITIONER: Andrew Mason Roy Chamcharas Todd Siegel KLARQUIST SPARKMAN, LLP andrew.mason@klarquist.com roy.chamcharas@klarquist.com todd.siegel@klarquist.com For PATENT OWNER: Ragnar Olson Alison Richards GLOBAL IP LAW GROUP, LLC rolson@giplg.com arichards@giplg.com