Karya Property Management, LLC

Patent Trials and Appeals BoardOct 13, 2021

IPR2021-00844 (P.T.A.B. Oct. 13, 2021)

Trials@uspto.gov Paper 10 571-272-7822 Date: October 13, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD RESMAN, LLC, Petitioner, v. KARYA PROPERTY MANAGEMENT, LLC, Patent Owner. IPR2021-00844 Patent 7,636,687 B2 Beforee MEREDITH C. PETRAVICK, SUSAN L. C. MITCHELL, and FRANCES L. IPPOLITO, Administrative Patent Judges. MITCHELL, Administrative Patent Judge. DECISION Dismissal Prior to Institution of Trial 35 U.S.C. § 314 IPR2021-00844 Patent 7,636,687 B2 2 I. DISCUSSION On April 28, 2021, Resman, LLC (“Petitioner”) filed a Petition requesting an inter partes review of claims 1–21 of U.S. Patent No. 7,636,687 B2 (“the ’687 patent”). Paper 3. On August 16, 2021, Karya Property Management, LLC, (“Patent Owner”) filed a Preliminary Response. Paper 7. A decision on whether to institute an inter partes review in this case has not yet been made. On September 2, 2021, the Parties filed an authorized Petitioner and Patent Owner’s Joint Motion to Terminate Inter Partes Review Proceeding Pursuant to 35 U.S.C. § 317 (“Joint Motion to Terminate”). Paper 8. The Parties also filed a Joint Request to File Settlement Agreement as Business Confidential Information Pursuant to 35 U.S.C. § 317. Paper 9. In the Joint Motion to Terminate, the Parties state that termination is appropriate because they have settled all disputes between them relating to the ’687 patent. Paper 8, 2. The Parties also state that they have entered into a mutual release, and the only pending litigation matter involving the validity of the claims of the ’687 patent has been dismissed with prejudice at the Parties’ request. Id. at 2–3. The Parties also represent that “there are no other agreements, oral or written, between the Parties made in connection with, or in contemplation of, the termination of these proceedings.” Id. at 3. This proceeding is at an early stage, and we have not yet considered the IPR2021-00844 Petition’s merits, nor have we instituted a trial. In view of the early stage of this proceeding, we determine it is appropriate to dismiss the Petition and terminate the proceeding to promote efficiency and minimize unnecessary costs. See 37 C.F.R. § 42.71(a). Therefore, the Parties’ Joint Motion is granted. IPR2021-00844 Patent 7,636,687 B2 3 The Parties also filed a Joint Request to file the Settlement Agreement (Ex. 1025) as business confidential information, which shall be kept separate from the file of the ’687 patent. Paper 9. After reviewing the Settlement Agreement between Petitioner and Patent Owner, we find that the Agreement contains confidential business information regarding the terms of settlement. We determine that good cause exists to treat the Settlement Agreement (Ex. 1025) 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). This paper does not constitute a final written decision pursuant to 35 U.S.C. § 318(a). II. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Joint Motion to Terminate is granted; FURTHER ORDERED that the IPR2021-00844 Petition is dismissed; FURTHER ORDERED that the IPR2021-00844 proceeding is terminated; FURTHER ORDERED that the Joint Request (Paper 9) to File Settlement Agreement (Ex. 1025) as Business Confidential Information Pursuant to 35 U.S.C. § 317 is granted; FURTHER ORDERED that the Settlement Agreement (Ex. 1025) shall be kept separate from the file of U.S. Patent No. 7,636,687 B2 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); and IPR2021-00844 Patent 7,636,687 B2 4 FURTHER ORDERED that this paper does not constitute a final written decision pursuant to 35 U.S.C. § 318(a). IPR2021-00844 Patent 7,636,687 B2 5 For PETITIONER: John Yates Brooks Tueting PATTERSON SHERIDAN jyates@pattersonsheridan.com btueting@pattersonsheridan.com For PATENT OWNER: Ali Dhanani Roger Fulghum Clarke Stavinhoa BAKER BOTTS LLP Ali.dhanani@bakerbotts.com Roger.fulghum@bakerbotts.com Clarke.stavinhoa@bakerbotts.com