Omnitek Partners LLC

Patent Trials and Appeals Board

May 13, 2021

IPR2020-01574 (P.T.A.B. May. 13, 2021)

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

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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