Newpark Mats & Integrated Services LLC

Patent Trials and Appeals BoardApr 7, 2021

IPR2020-01614 (P.T.A.B. Apr. 7, 2021)

Trials@uspto.gov Paper 13 571-272-7822 Entered: April 7, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ YAK ACCESS, LLC, Petitioner, v. NEWPARK MATS & INTEGRATED SERVICES LLC, Patent Owner ____________ IPR2020-01614 Patents 9,985,390 B2 ____________ Before JAMESON LEE, DEBRA K. STEPHENS, and MONICA S. ULLAGADDI, Administrative Patent Judges. LEE, Administrative Patent Judge. DECISION Settlement Prior to Institution of Trial 37 C.F.R. § 42.74 IPR2020-01614 Patent 9,985,390 B2 2 DISCUSSION On April 5, 2021, with Board authorization, the parties filed a Joint Motion to Terminate (Paper 11, “Motion to Terminate”), a settlement agreement between the parties (Ex. 2013, “Settlement Agreement”), and a request to keep the Settlement Agreement as business confidential information and separate from the file of Patent 9,985,390 B2 (Paper 12, “Request to Keep Settlement Agreement Confidential and Separate”). The Motion to Terminate states: “The parties have now settled their dispute and have reached agreement to terminate the Petition.” Paper 11, 2. The Motion to Terminate also states: “Exhibit 2013 represents the entire agreement or understanding between the Parties made in connection with, or in contemplation of, the termination of this proceeding, and further, that Exhibit 2013 is a true and accurate copy of the agreement between the Parties that resolves the present proceeding.” Id. Generally, the Board expects that a proceeding will terminate after the filing of a settlement agreement, unless the Board has already decided the merits of the proceeding. PTAB Consolidated Trial Practice Guide, 86 (November 2019). This proceeding is at an early stage. We have not issued a decision on whether to institute an inter partes review. Under these circumstances, we grant the Motion to Terminate (Paper 11) as to both Petitioner and Patent Owner. We also grant the Request to Keep Settlement Agreement Confidential and Separate (Paper 12) under the terms of 37 C.F.R. § 42.74(c). IPR2020-01614 Patent 9,985,390 B2 3 Order It is ORDERED that the Motion to Terminate (Paper 11) is granted both as to Petitioner and Patent Owner; FURTHER ORDERED that the Request to Keep Settlement Agreement Confidential and Separate (Paper 12) is granted under the terms of 37 C.F.R. § 42.74(c); FURTHER ORDERED that the Settlement Agreement (Ex. 2013) shall be treated as business confidential information, shall be kept separate from the file of Patent 9,985,390 B2, and shall be made available only in accordance with the provisions of 37 C.F.R. § 42.74(c); and FURTHER ORDERED that this proceeding is terminated both as to Petitioner and Patent Owner, and the Petition is dismissed. IPR2020-01614 Patent 9,985,390 B2 4 For PETITIONER: Robert J. Tosti Daniel A. Palmer BROWN RUDNICK LLP rtosti@brownrudnick.com dpalmer@brownrudnick.com For PATENT OWNER: Jennifer C. Bailey Megan J. Redmond ERISE IP, P.A. Jennifer.Bailey@EriseIP.com Megan.Redmond@EriseIP.com David J. Smith NEWPARK RESOURCES, INC. jsmith7@newpark.com