DiversiTech Corporation

Patent Trials and Appeals Board

Dec 23, 2021

IPR2021-00523 (P.T.A.B. Dec. 23, 2021)

Trials@uspto.gov Paper 14
571-272-7822 Date: December 23, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

RECTORSEAL, LLC, THE RECTORSEAL CORPORATION, and
CSW INDUSTRIALS, INC.
Petitioners,
v.
DIVERSITECH CORPORATION,
Patent Owner.

IPR2021-00523
Patent 9,550,223 B2

Before KEN B. BARRETT, PHILLIP J. KAUFFMAN, and
MATTHEW S. MEYERS, Administrative Patent Judges.
KAUFFMAN, Administrative Patent Judge.
TERMINATION
Due to Settlement After Institution of Trial
35 U.S.C. § 317; 37 C.F.R. § 42.74

IPR2021-00523
Patent 9,550,223 B2
2
On December 20, 2021, with Board authorization, Petitioner and
Patent Owner (collectively “the Parties”) filed a Joint Motion to Terminate
Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. §§42.72, 42.74. Paper 11
(“Joint Motion”). Along with the Joint Motion, the Parties filed a true copy
of their confidential Settlement Agreement (Ex. 1020), as well as a Joint
Motion to Treat Settlement Agreement as Business Confidential Information
(Paper 12, “Joint Request”). See 37 C.F.R. § 42.74(b) (agreements shall be
in writing and a true copy shall be filed), (c) (a party to a settlement may
request that the settlement agreement be treated as business confidential and
be kept separate from the patent file). In the Joint Motion, the Parties
represent that they have reached an agreement to jointly seek termination of
the above-identified inter partes review proceeding. Joint Motion 2.
We instituted trial on August 27, 2021. See Paper 6 (Institution
Decision). Patent Owner has not filed its response. At this early stage of the
trial, we have not rendered a final decision on the merits. Because the
Parties are jointly requesting termination, and the Office has not yet
“decided the merits of the proceeding before the request for termination is
filed,” termination of this proceeding with respect to the Petitioner is proper.
See 35 U.S.C. § 317(a).
This Order does not constitute a final written decision pursuant to 35
U.S.C. § 318(a).
The parties also ask that the Settlement Agreement be treated as
business confidential information and be kept separate from the file of the
challenged patent. Joint Request 2. We determine that it is appropriate to
treat the Settlement Agreement as business confidential information, and to
keep that document separate from the file of the challenged patent, pursuant
to 37 C.F.R. § 42.74(c).
IPR2021-00523
Patent 9,550,223 B2
3
For the foregoing reasons, it is:
ORDERED that the Joint Motion is granted and this proceeding is
terminated with respect to Petitioner and Patent Owner; and
FURTHER ORDERED that the Joint Request that the confidential
Settlement Agreement (Ex. 1020) be treated as business confidential
information, and be kept separate from the patent file, is granted in this
proceeding.

IPR2021-00523
Patent 9,550,223 B2
4
FOR PETITIONER:

David B. Conrad
FISH & RICHARDSON P.C.
conrad@fr.com

John Lynn
DISCOVERY IP LAW, PLLC
lynn@discovery-ip.com

FOR PATENT OWNER:

Scott W. Cummings
Catherine N. Taylor
DENTONS US LLP
scott.cummings@dentons.com
catherine.taylor@dentons.com