Karya Property Management, LLC

Patent Trials and Appeals Board

Sep 27, 2021

CBM2020-00020 (P.T.A.B. Sep. 27, 2021)

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–
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Patent 7,636,687 B2

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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

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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