Weserve Drone, LLC

Patent Trials and Appeals BoardAug 17, 2020

IPR2020-00517 (P.T.A.B. Aug. 17, 2020)

Trials@uspto.gov Paper No. 9 571-272-7822 Date: August 17, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ DJI TECHNOLOGY, INC., Petitioner, v. WESERVE DRONE, LLC, Patent Owner. ____________ IPR2020-00517 Patent 9,352,834 B2 ____________ Before PATRICK R. SCANLON, JAMES J. MAYBERRY and RICHARD H. MARSCHALL, Administrative Patent Judges. SCANLON, Administrative Patent Judge. DECISION Settlement Prior to Institution of Trial 37 C.F.R. § 42.74 IPR2020-00517 Patent 9,352,834 B2 2 On August 14, 2020, pursuant to our authorization, DJI Technology, Inc. (“Petitioner”) and Weserve Drone, LLC (“Patent Owner”) filed a Joint Motion to Terminate this proceeding. Paper 6 (“the Joint Motion” or “Mot.”). With the Joint Motion, the parties filed a copy of their written settlement agreement memorializing the resolution of their disputes. Ex. 1024 (“the Settlement Agreement”). The parties also filed a Joint Request to Treat the Parties’ Settlement Agreement as Business Confidential Information and Kept Separate. Paper 7 (“the Joint Request”). In the Joint Motion, Petitioner and Patent Owner assert that the Settlement Agreement resolves all of their disputes concerning the patent challenged in this proceeding, U.S. Patent No. 9,352,834 B2 (Ex. 1001, “the ’834 patent”), and they are jointly requesting that the Board terminate this proceeding in accordance with 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74. Mot. 1. The parties also assert that the related district court proceeding has already been dismissed with prejudice under the terms of the Settlement Agreement. Id. (citing Ex. 1023). Furthermore, the parties represent that the filed copy of the Settlement Agreement is a true copy and represents all agreements and understandings between the parties made in connection with, or in contemplation of, the termination of this proceeding. Id. at 2. This proceeding is at an early stage, as the Board has not yet issued a decision whether to institute an inter partes review. Under these circumstances, and in view of the parties’ representations in the Joint Motion, we determine that it is appropriate to terminate this proceeding. Additionally, upon review of the Joint Request, we determine that good cause exists to treat the Settlement Agreement as business confidential IPR2020-00517 Patent 9,352,834 B2 3 information and kept separate under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). In consideration of the foregoing, it is hereby: ORDERED that the Joint Motion is granted, and this proceeding is terminated; and FURTHER ORDERED that the Joint Request is granted, and the Settlement Agreement (Exhibit 1024) be treated as business confidential information and be kept separate from the files of the ’834 patent. IPR2020-00517 Patent 9,352,834 B2 4 For PETITIONER: Edgar Huang Robert Colletti Brian Murphy HAUG PARTNERS LLP ehaug@haugpartners.com rcolletti@haugpartners.com bmurphy@haugpartners.com For PATENT OWNER: Cabrach Connor Kevin Kudlac CONNOR KUDLAC LEE PLLC cab@connorkudlaclee.com kevin@connorkudlaclee.com