STC.UNM

Patent Trials and Appeals BoardJan 27, 2021

IPR2020-00984 (P.T.A.B. Jan. 27, 2021)

Trials@uspto.gov Paper 18 571-272-7822 Entered: January 27, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD GLOBALFOUNDRIES INC., Petitioner, v. UNM RAINFOREST INNOVATIONS F/K/A STC.UNM, Patent Owner. IPR2020-00984 Patent 9,142,400 B1 Before KRISTEN L. DROESCH, CHRISTOPHER L. CRUMBLEY, and CHARLES J. BOUDREAU, Administrative Patent Judges. DROESCH, Administrative Patent Judge. TERMINATION Due to Settlement After Institution of Trial 35 U.S.C. § 317; 37 C.F.R. § 42.74 IPR2020-00984 Patent 9,142,400 B1 2 I. DISCUSSION Pursuant to authorization by the Board, the parties filed the following: (1) a joint motion to terminate the proceeding (Paper 15, “Joint Motion to Terminate”); (2) true copies of the parties’ settlement agreements (Exs. 2040, 2041); and (3) a joint request that the settlement agreements be treated as business confidential information and to keep separate pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (Paper 16, “Joint Request”). Oral argument has not been held, and a final written decision has not been entered. In the Joint Motion to Terminate, the parties indicate that they have settled all their disputes in this proceeding, and have agreed to terminate the proceeding. See Paper 15, 1. The parties “certify that there are no other collateral agreements or understandings, oral or written, between the parties made in connection with, or in contemplation of, the termination of this proceeding.” Id. at 4. Under these particular circumstances, we determine that it is appropriate to terminate the proceeding without rendering a final written decision. See 35 U.S.C. § 317; 37 C.F.R. § 42.72. In addition, we have reviewed the true copy of the parties’ settlement agreements (Exs. 2040, 2041) and determine that good cause exists to treat these settlement agreements as business confidential information and to keep them separate from the file of U.S Patent No. 9,142,400 B1 (Ex. 1001, “the ’400 Patent”) pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). IPR2020-00984 Patent 9,142,400 B1 3 II. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Joint Request (Paper 16) to treat the settlement agreements (Exs. 2040, 2041) as business confidential information and to keep them separate from the file of the involved patent pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is granted; FURTHER ORDERED that the settlement agreements (Exs. 2040, 2041) accordingly shall be treated as business confidential information, kept separate from the file of the ’400 Patent, and made available only to Federal Government agencies on written request to the Board, or to any person on a showing of good cause, under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c); and FURTHER ORDERED that the Joint Motion to Terminate (Paper 15) is granted, and the proceeding is terminated. IPR2020-00984 Patent 9,142,400 B1 4 PETITIONER: Anupam Sharma Peter Chen Richard Rainey Gregory Discher COVINGTON & BURLING LLP asharma@cov.com pchen@cov.com rrainey@cov.com gdischer@cov.com PATENT OWNER: James Hall Stephen Zinda J. David Cabello CABELLO HALL ZINDA, PLLC james@chzfirm.com stephen@chzfirm.com david@chzfirm.com