Qwikcash, LLC

Patent Trials and Appeals BoardOct 5, 2020

IPR2020-00972 (P.T.A.B. Oct. 5, 2020)

Trials@uspto.gov Paper 9 571-272-7822 Entered: October 5, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ UNIFIED PATENTS, LLC, Petitioner, v. QWIKCASH, LLC, Patent Owner. _______________ IPR2020-00972 Patent 8,714,445 B1 _______________ Before JUSTIN T. ARBES, DAVID C. MCKONE, and TERRENCE W. MCMILLIN, Administrative Patent Judges. MCMILLIN, Administrative Patent Judge. DECISION Settlement Prior to Institution of Trial 37 C.F.R. § 42.74 IPR2020-00972 Patent 8,714,445 B1 2 On September 25, 2020, Petitioner and Patent Owner (collectively referred to as “the parties”) filed a Joint Motion to Terminate the above- identified proceeding (Paper 7 (“Joint Motion”)) and a Joint Motion to keep a settlement agreement as business confidential information and to keep the settlement agreement separate from the file of the involved patent (Paper 8 (“Joint Request”)), pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74, along with a copy of the written settlement agreement (Ex. 1027 (“Settlement Agreement”)). In the Joint Motion, the parties represent that they have reached an agreement to jointly seek termination of this inter partes review proceeding. In addition, the parties represent that the filed copy of the Settlement Agreement is a true and complete copy 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.” Paper 7, 1. The parties further represent that their Settlement Agreement resolves all currently pending Patent Office proceedings between the parties involving the challenged patent. Id at 3. This proceeding is at an early stage. Patent Owner has not filed a preliminary response and we have not decided whether to institute a trial. In view of the early stage of the proceeding and the settlement between the parties, we determine that good cause exists to terminate this proceeding. Additionally, upon review of the Joint Request that the Settlement Agreement be treated as business confidential information and be kept separate from the file of the patent involved in this inter partes review proceeding, we determine that good cause exists to treat the Settlement IPR2020-00972 Patent 8,714,445 B1 3 Agreement 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). Therefore, the Joint Motion and the Joint Request are granted. This Order does not constitute a final written decision pursuant to 35 U.S.C. § 318(a). Accordingly, it is: ORDERED that the Joint Motion (Paper 7) to terminate the above- identified proceeding is granted, and IPR2020-00972 is terminated; and FURTHER ORDERED that the Joint Request (Paper 8) that the Settlement Agreement (Ex. 1027) be treated as business confidential information and be kept separate from the file of the above-identified proceeding and from the file of U.S. Patent No. 8,714,445 B1, under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is granted. IPR2020-00972 Patent 8,714,445 B1 4 Petitioner: Jason Mudd Eric Buresh ERISE IP, P.A. jason.mudd@eriseip.com eric.buresh@eriseip.com Ashraf Fawzy Alyssa Holtslander UNIFIED PATENTS INC. afawzy@unifiedpatents.com alyssa@unifiedpatents.com Patent Owner: Brian Lynch NIRO MCANDREWS, LLP blynch@niro-mcandrews.com