Omnitek Partners LLCDownload PDFPatent Trials and Appeals BoardMay 13, 2021IPR2020-01574 (P.T.A.B. May. 13, 2021) Copy Citation Trials@uspto.gov Paper 12 571.272.7822 Entered: May 13, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD UNIFIED PATENTS, LLC, Petitioner, v. OMNITEK PARTNERS LLC, Patent Owner. IPR2020-01574 Patent 8,224,569 B2 Before TIMOTHY J. GOODSON, JAMES J. MAYBERRY, and SEAN P. O’HANLON, Administrative Patent Judges. GOODSON, Administrative Patent Judge. TERMINATION Due to Settlement After Institution of Trial 35 U.S.C. § 317(a),(b) and 37 C.F.R. §§ 42.72, 42.74 IPR2020-01574 Patent 8,224,569 B2 2 I. INTRODUCTION With the Board’s prior authorization, Unified Patents, LLC and Omnitek Partners LLC (collectively, “the Parties”) filed a Joint Motion to Terminate. Paper 9 (“Joint Motion”). In support of the Joint Motion, the Parties filed a copy of a “Confidential Settlement and License Agreement.” Ex. 1024 (“Settlement Agreement”). The Parties also filed a “Joint Motion to Keep Confidential and Separate” the Settlement Agreement. Paper 10 (“Joint Request”). II. DISCUSSION In the Joint Motion, the Parties state that they “have entered into a written confidential settlement agreement that fully resolves this matter.” Joint Motion 1. The parties further state that the Settlement Agreement “represents a true and accurate copy of the agreement between the parties that resolves the present proceeding,” and that “there are no other agreements, oral or written, between the parties made in connection with, or in contemplation of, the termination of the present proceeding.” Id. Although we have decided to institute a trial in this proceeding, we have not conducted an oral hearing and we have not decided the merits in this proceeding. See Joint Motion 3. In view of the Settlement Agreement, we determine that good cause exists and that it is appropriate to terminate this proceeding without rendering a final written decision. See 35 U.S.C. § 317(a); 37 C.F.R. §§ 42.72, 42.74. In the Joint Request, the Parties request to file the Settlement Agreement “as business confidential information, and to have it be kept separate from the file of the involved patent.” Joint Request 1. IPR2020-01574 Patent 8,224,569 B2 3 After reviewing the Settlement Agreement, we determine that good cause exists to treat the Settlement Agreement (Ex. 1024) as business confidential information under 37 C.F.R. § 42.74(c), to keep it separate from the files of the involved patent and associated proceeding, and to limit its availability. This Order does not constitute a final written decision pursuant to 35 U.S.C. § 318(a). III. ORDER Accordingly, it is: ORDERED that the Joint Motion to Terminate is granted; FURTHER ORDERED that the proceeding in IPR2020-01574 is terminated; and FURTHER ORDERED that the Joint Motion to Keep Confidential and Separate is granted, and the Settlement Agreement shall remain designated as “Parties and Board Only” in the Board’s filing system, shall made available only to Federal Government agencies on written request, or to any person on a showing of good cause, and shall be kept separate from the files of the involved patent and associated proceeding, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). IPR2020-01574 Patent 8,224,569 B2 4 For PETITIONER: Alyssa Holtslander Ashraf Fawzy UNIFIED PATENTS, LLC alyssa@unifiedpatents.com afawzy@unifiedpatents.com For PATENT OWNER: Patrick R. Delaney Timothy Devlin DEVLIN LAW FIRM LLC pdelaney@devlinlawfirm.com tdevlin@devlinlawfirm.com Copy with citationCopy as parenthetical citation