Paradise IP LLC

Patent Trials and Appeals Board

Jan 19, 2022

IPR2021-01568 (P.T.A.B. Jan. 19, 2022)

Trials@uspto.gov Paper 10 571-272-7822 Entered: January 19, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ UNIFIED PATENTS, LLC, Petitioner, v. PARADISE IP LLC, Patent Owner. _______________ IPR2021-01568 Patent 7,200,613 B2 _______________ Before JENNIFER MEYER CHAGNON, STEVEN M. AMUNDSON, and STEPHEN E. BELISLE, Administrative Patent Judges. BELISLE, Administrative Patent Judge. DECISION Settlement Prior to Institution of Trial 37 C.F.R. § 42.74 IPR2021-01568 Patent 7,200,613 B2 2 On December 27, 2021, pursuant to Board authorization, Petitioner and Patent Owner filed a joint motion to dismiss the Petition prior to institution. Paper 7. Along with the motion, the parties filed a copy of a document described as a settlement agreement (Paper 7, 1; Ex. 1030), as well as a joint request to treat the settlement agreement as business confidential information and to have it be kept separate from the file of the involved patent (Paper 8; see 37 C.F.R. § 42.74(c) (a party to a settlement may request that the settlement agreement be treated as business confidential information and be kept separate from the patent file)). The case is in a preliminary stage. The Board has not yet issued a decision on whether to institute the proceeding. The parties state in the joint motion that they have settled their dispute and have reached agreement to dismiss the Petition. Paper 7, 1. The parties represent that Exhibit 1030 is “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 dismissal of the present proceeding . . . .” Id. We are persuaded that, under these circumstances, it is appropriate to dismiss the Petition in the proceeding. 37 C.F.R. §§ 42.5(a), 42.71(a). This Order does not constitute a final written decision pursuant to 35 U.S.C. § 318(a). It is therefore ORDERED that the joint motion is granted and the Petition is dismissed in this proceeding; and IPR2021-01568 Patent 7,200,613 B2 3 FURTHER ORDERED that the joint request that the settlement agreement be treated as business confidential information, to be kept separate from the patent file, is granted in this proceeding. IPR2021-01568 Patent 7,200,613 B2 4 For PETITIONER: Jordan M. Rossen Ashraf Fawzy UNIFIED PATENTS, LLC jordan@unifiedpatents.com afawzy@unifiedpatents.com For PATENT OWNER: Sanjay Pant PRA LAW spant@pralawllc.com Gautham Bodepudi gbodepudi@outlook.com