Contec, LLC

Patent Trials and Appeals Board

May 13, 2020

IPR2019-01669 (P.T.A.B. May. 13, 2020)

Trials@uspto.gov Paper 14
Tel: 571-272-7822 Date: May 13, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

COMMUNICATIONS TEST DESIGN, INC.,
Petitioner,

v.

CONTEC, LLC,
Patent Owner.
____________

IPR2019-01669 (Patent 8,689,071 B2)
IPR2019-01670 (Patent 8,209,731 B2)1
____________

Before KEVIN F. TURNER, TREVOR M. JEFFERSON, and
JOHN P. PINKERTON, Administrative Patent Judges.

PINKERTON, Administrative Patent Judge.

TERMINATION
Due to Settlement After Institution of Trial
35 U.S.C. § 317; 37 C.F.R. § 42.74

1 This Order is applicable to each of these proceedings and will be entered
in each proceeding.
IPR2019-01669, -01670
Patents 8,209,731 B2; 8,689,071 B2

2
I. INTRODUCTION
On March 25, 2020, the Decision Granting Institution of Inter Partes
Review was entered in IPR2019-01669, which involves claims 1−7 of U.S.
Patent No. 8,689,071 B2 (“the ’071 patent”). Paper 9. On that same day,
the Decision Granting Institution of Inter Partes Review was entered in
IPR2019-01670, which involves claims 1−25 of U.S. Patent No. 8,209,732
B2 (“the ’732 patent”). Paper 9.
Petitioner and Patent Owner now jointly request that these inter partes
review proceedings be terminated pursuant to a settlement. On May 7, 2020,
the parties filed a Joint Motion to Terminate Inter Partes Review pursuant to
35 U.S.C. § 317 in both of these proceedings.2 Paper 11 (“Joint Motion”).
Concurrently, the parties also filed a Joint Request to File Confidential
Settlement Agreement as Business Confidential Information (Paper 12,
“Joint Request”) and their Confidential Settlement Agreement (Ex. 1022,
“Settlement Agreement”). We authorized the filing of these papers in an
email to counsel for the parties dated May 1, 2020.
II. DISCUSSION
Under 35 U.S.C. § 317(a), “[a]n inter partes 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.”

2 The joint motion to terminate and other papers filed concurrently by the
parties in both of these proceedings are substantially identical, except for the
patent numbers and certain exhibit numbers. For ease of reference, we will
refer to the papers filed in IPR2019-01669.
IPR2019-01669, -01670
Patents 8,209,731 B2; 8,689,071 B2

3
Section 317(b) requires that any agreement between the parties, including
collateral agreements, made in connection with the termination of an inter
partes review “shall be in writing and a true copy of such agreement or
understanding shall be filed in the Office before the termination of the inter
partes review as between the parties.”
In the Joint Motion, the parties state that they have “entered into a
Confidential Settlement Agreement that resolves all underlying disputes”
between them with respect to the ’732 and ’071 patents. Paper 11, 1. The
parties also state that under the terms of their settlement agreement, they
“agreed to jointly seek termination” of these proceedings. Id. The parties
further state that the two district court actions involving the ’732 and ’071
patents have been dismissed with prejudice. Id. at 2. Moreover, the parties
represent that there are “no agreements or understandings, oral or written,
between the parties beyond those of Exhibit 1022 made in connection with,
or in contemplation of, the termination of this inter partes review.” Id. at 5.
In the Joint Request, the parties state that they consider their
confidential settlement agreement “to contain highly sensitive business
confidential information that would substantially harm their business
interests if publicly disclosed.” Paper 12, 1. Thus, the parties jointly
request “that Exhibit 1022 be kept as a separate paper to be made available
only under the provisions of 35 U.S.C § 317(b) and 37 C.F.R. § 42.74(c).”
Id.
Although we instituted an inter partes review for each of these
proceedings on March 25, 2020, neither proceeding has reached due date 1
of the scheduling order, as the parties state (Paper 12, 1 (citing Paper 10)),
and we have not yet decided the merits of, or entered a final written decision
IPR2019-01669, -01670
Patents 8,209,731 B2; 8,689,071 B2

4
in, either of the proceedings. Given the early stage of these proceedings, the
parties have shown adequately that termination is appropriate. Under these
circumstances, we determine that good cause exists to terminate the
proceedings. We further determine that the Settlement Agreement complies
with the requirements for written agreements regarding termination set forth
in 35 U.S.C. § 317(b).
With respect to the Joint Request, we have reviewed the Settlement
Agreement and find that it contains confidential business information of the
parties regarding the terms of settlement. We determine that good cause
exists to treat the Settlement Agreement as business confidential information
pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
III. CONCLUSION
For the foregoing reasons, we grant the parties’ Joint Motion and Joint
Request in each of these proceedings. This determination does not
constitute a final written decision pursuant to 35 U.S.C. § 318(a).
IV. ORDER
Accordingly, it is:
ORDERED that, for each proceeding, the Joint Motion to Terminate
is granted, and IPR2019-01669 and IPR2019-01670 are terminated due to
settlement after institution decision with respect to Petitioner and Patent
Owner pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72; and,
FURTHER ORDERED that, for each proceeding, the Joint Request
that the Settlement Agreement be treated as business confidential
information is granted, and the Settlement Agreement shall be kept separate
from the files of U.S. Patent Nos. 8,209,731 B2 and 8,689,071 B2, and made
IPR2019-01669, -01670
Patents 8,209,731 B2; 8,689,071 B2

5
available only to Federal Government agencies on written request, or to any
person on a showing of good cause, pursuant to 37 C.F.R. § 42.74(c).

IPR2019-01669, -01670
Patents 8,209,731 B2; 8,689,071 B2

6
For PETITIONER:
Richard W. Miller
Lynn E. Rzonca
Jonathon A. Talcott
BALLARD SPAHR LLP
millerrw@ballardspahr.com
rzoncal@ballardspahr.com
talcottj@ballardspahr.com
Contec_071_IPR@ballardspahr.com

For PATENT OWNER:
Coby S. Nixon
TAYLOR ENGLISH DUMA LLP
cnixon@taylorenglish.com