Karya Property Management, LLCDownload PDFPatent Trials and Appeals BoardSep 27, 2021CBM2020-00020 (P.T.A.B. Sep. 27, 2021) Copy Citation Trials@uspto.gov Paper 23 571-272-7822 Entered: September 27, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD RESMAN, LLC, Petitioner, v. KARYA PROPERTY MANAGEMENT, LLC, Patent Owner. CBM2020-00020 Patent 7,636,687 B2 Before MEREDITH C. PETRAVICK, SUSAN L. C. MITCHELL, and FRANCES L. IPPOLITO, Administrative Patent Judges. MITCHELL, Administrative Patent Judge. TERMINATION Due to Settlement After Institution of Trial 35 U.S.C. § 317; 37 C.F.R. § 42.74 CBM2020-00020 Patent 7,636,687 B2 2 I. INTRODUCTION Resman, LLC (“Petitioner”) filed a Petition (“Pet.”) to institute an covered business method patent review of claims 1–211 of U.S. Patent No. 7,636,687 B2 (Ex. 1001, “the ’687 patent”). Paper 1. Karya Property Management, LLC (“Patent Owner”) filed a Preliminary Response (Paper 8, “Prelim. Resp.”). On March 17, 2021, we instituted a covered business method patent review of all challenged claims of the ’687 patent with respect to all grounds set forth in the Petition. Paper 9. Patent Owner has filed its Response (Paper 18). On September 9, 2021, the Parties filed an authorized Petitioner and Patent Owner’s Joint Motion to Terminate Covered Business Method Review Proceeding Pursuant to 35 U.S.C. § 327 (“Joint Motion to Terminate”). Paper 21. The Parties also filed a Joint Request to File Settlement Agreement as Business Confidential Information Pursuant to 35 U.S.C. § 327. Paper 22. II. DISCUSSION Section 327 of Title 35 of the United States Code2 provides that a covered business method patent review: instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed. . . . . If no petitioner remains in the post-grant review, the Office may 1 Patent Owner has disclaimed claims 2 and 19. See Ex. 2011. 2 The Transitional Program for Covered Business Method Patents states that a covered business method patent proceeding “shall be regarded as, and shall employ the standards and procedures of, a post-grant review under chapter 32 of title 35 of the United States Code . . . .” Section 18(a)(1) of the Leahy- Smith America Invents Act (Pub. L. 112-29, 125 Stat. 284 (2011). CBM2020-00020 Patent 7,636,687 B2 3 terminate the post-grant review or proceed to a final written decision under section 328(a). 35 U.S.C. § 327(a). In the Joint Motion to Terminate, the Parties state that termination is appropriate because they have settled all disputes between them relating to the ’687 patent. Paper 21, 2. The Parties also state that they have entered into a mutual release, and the only pending litigation matter involving the validity of the claims of the ’687 patent has been dismissed with prejudice at the Parties’ request. Id. at 2–3. The Parties also represent that “there are no other agreements, oral or written, between the Parties made in connection with, or in contemplation of, the termination of these proceedings.” Id. at 3. As the parties have noted, we have not yet decided the merits of this proceeding, and no final written decision has been entered in this case. See id. at 3 (stating Petitioner’s reply is not yet due and has not been filed, “the proceedings are still in the preliminary stage, the record lacks full briefing on all trial issues, and the Board has not decided the merits of the proceeding”). Notwithstanding that this proceeding has moved beyond the preliminary stage, the Parties have shown sufficiently that the termination of this proceeding is appropriate. For instance, the Parties have represented that they have agreed to settle and dismiss all currently pending litigation, there is no other litigation relating to the patent currently pending, and there are no other Office related proceedings other than IPR2021-00844 for which the parties have also jointly requested termination. Id. at 4. Therefore, we agree with the Parties that terminating this proceeding conserves the resources of the Board and the Parties, ensures certainty, and promotes settlements for a more efficient and streamlined patent system. See id. at 3– CBM2020-00020 Patent 7,636,687 B2 4 4. Under these circumstances, we determine that good cause exists to terminate the above-identified proceeding with respect to the Parties. The Parties also filed a Joint Request to file the Settlement Agreement (Ex. 1013) as business confidential information, which shall be kept separate from the file of the ’687 patent. Paper 22. After reviewing the Settlement Agreement between Petitioner and Patent Owner, we find that the Agreement contains confidential business information regarding the terms of settlement. We determine that good cause exists to treat the Settlement Agreement (Ex. 1013) between Petitioner and Patent Owner as business confidential information pursuant to 35 U.S.C. § 327(b) and 37 C.F.R. § 42.74(c). This Order does not constitute a final written decision pursuant to 35 U.S.C. § 328(a). III. ORDER Accordingly, it is hereby: ORDERED that the Joint Motion to Terminate (Paper 21) is granted, and CBM2020-00020 is terminated with respect to Petitioner and Patent Owner pursuant to 35 U.S.C. § 327(a); FURTHER ORDERED that the Joint Request (Paper 22) to File Settlement Agreement (Ex.1013) as Business Confidential Information Pursuant to 35 U.S.C. § 327 is granted; and FURTHER ORDERED that the Settlement Agreement (Ex. 1013) shall be kept separate from the file of U.S. Patent No. 7,636,687 B2 and made available only to Federal Government agencies on written request, or to any person on a showing of good cause, pursuant to 35 U.S.C. § 327(b) and 37 C.F.R. § 42.74(c). CBM2020-00020 Patent 7,636,687 B2 5 PETITIONER: John Yates Brooks Tueting PATTERSON + SHERIDAN, LLP jyates@pattersonsheridan.com btueting@pattersonsheridan.com PATENT OWNER: Ali Dhanani Roger Fulghum Clarke Stavinoha BAKER BOTTS L.L.P. Ali.dhanani@bakerbotts.com Roger.fulghum@bakerbotts.com Clarke.stavinoha@bakerbotts.com Copy with citationCopy as parenthetical citation