Synkloud Technologies, LLC

Patent Trials and Appeals BoardJun 28, 2021

IPR2020-01393 (P.T.A.B. Jun. 28, 2021)

Trials@uspto.gov Paper 13 571-272-7822 Date: June 28, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD ADOBE INC., Petitioner, v. SYNKLOUD TECHNOLOGIES, LLC, Patent Owner. IPR2020-01392, IPR2020-01393 Patent 9,239,686 B2 Before SALLY C. MEDLEY, LYNNE E. PETTIGREW, and KRISTI L. R. SAWERT, Administrative Patent Judges. PETTIGREW, Administrative Patent Judge. TERMINATION Due to Settlement After Institution of Trial 35 U.S.C. § 317; 37 C.F.R. § 42.74 IPR2020-01392, IPR2020-01393 Patent 9,239,686 B2 2 I. INTRODUCTION On our authorization (Ex. 30011), the parties filed a Joint Motion to terminate each of these proceedings under 35 U.S.C. § 317 and 37 C.F.R. § 42.72. Paper 11 (“Motion” or “Mot.”). The parties also filed what they indicate is a true and correct copy of their Settlement Agreement and Covenant Not-To-Sue. Ex. 2042 (“Settlement Agreement”). In a Joint Request, the parties identified the Settlement Agreement as business confidential information and requested that the Settlement Agreement be kept separate from the patent file. Paper 12 (“Joint Request”). For the reasons discussed below, the Motion and Joint Request are granted in each proceeding. II. ANALYSIS We have not decided the merits of these proceedings. The parties indicate that they have settled their disputes regarding U.S. Patent No. 9,239,686 B2. Mot. 2. The parties represent that they submitted “the Parties’ settlement agreement and any collateral agreements made in contemplation of termination of the proceedings.” Id. at 3. Under these circumstances, we determine that it is appropriate to terminate these proceedings. See 37 C.F.R. § 42.72. We also determine that it is appropriate to treat the Settlement Agreement as business confidential information to be kept separate from the patent file. See 37 C.F.R. § 42.74(c). 1 The cited papers and exhibits are the same in both proceedings. IPR2020-01392, IPR2020-01393 Patent 9,239,686 B2 3 III. ORDER It is hereby: ORDERED that the Motion to terminate each of these inter partes review proceedings is granted; FURTHER ORDERED that these proceedings are terminated as to all parties; and FURTHER ORDERED that the Joint Request to treat the Settlement Agreement (Ex. 2042) as business confidential information to be kept separate from the patent file is granted. IPR2020-01392, IPR2020-01393 Patent 9,239,686 B2 4 FOR PETITIONER: James L. Day Winston Liaw Daniel Callaway FARELLA BRAUN + MARTEL LLP jday@fbm.com wliaw@fbm.com dcallaway@fbm.com FOR PATENT OWNER: Gregory J. Gonsalves Yeasun Yoon CAPITOL IP LAW GROUP, PLLC gonsalves@capitoliplaw.com yoon@capitoliplaw.com