Escort Inc.

Patent Trials and Appeals Board

Aug 26, 2020

IPR2019-00724 (P.T.A.B. Aug. 26, 2020)

Trials@uspto.gov Paper No. 25
Tel: 571-272-7822 Entered: August 26, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
UNIDEN AMERICA CORPORATION,
Petitioner,

v.

ESCORT INC.,
Patent Owner.
_______________

IPR2019-00724
Patent 7,576,679 B1
_______________

Before HUBERT C. LORIN, PATRICK R. SCANLON, and
BARRY L. GROSSMAN, Administrative Patent Judges.

GROSSMAN, Administrative Patent Judge.

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

IPR2019-00724
Patent 7,576,679 B1

2
I. INTRODUCTION
Per our authorization provided in an email dated August 18, 2020,
Petitioner and Patent Owner (collectively “the Parties”) filed a Joint Motion
to Terminate (Paper 22, “Joint Motion”) and a Joint Request to Treat
Agreement as Business Confidential Information (Paper 23, “Joint
Request”). In support of the Joint Motion, the Parties also filed a copy of a
Settlement and Patent License Agreement. Ex. 2005 (“Agreement”).
II. DISCUSSION
In the Joint Motion, the Parties represent that terminating this
proceeding is appropriate because they have resolved their disputes
regarding U.S. Patent No. 7,576,679 B1 (“the ’679 patent”). Joint Motion 1.
According to the Parties, “[t]here are no other agreements, oral or written,
between the [P]arties made in connection with, or in contemplation of, the
termination of this proceeding.” Id.
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 patent owner, unless the Office has decided the
merits of the proceeding before the request for termination is filed.” Indeed,
there are strong public policy reasons to favor settlement between the parties
to a proceeding. Consolidated Office Patent Trial Practice Guide, November
2019, at 861.
We instituted a trial in this proceeding on September 17, 2019. Paper
6. However, we have not yet decided the merits of the proceeding, and a
final written decision has not been entered. Notwithstanding that the

1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
IPR2019-00724
Patent 7,576,679 B1

3
proceeding has moved beyond the preliminary stage, the Parties have shown
adequately that the termination of the proceeding is appropriate.
Accordingly, we determine that good cause exists to terminate the
proceeding with respect to the Parties without rendering a final written
decision. See 37 C.F.R. § 42.72.
In the Joint Request, the Parties request that the Settlement Agreement
be treated as business confidential information and be kept separate from the
file of the ’679 patent. Joint Request 1. After reviewing the Settlement
Agreement between the Parties, we find that the Settlement Agreement
contains confidential business information regarding the terms of settlement.
We determine that good cause exists to treat the Settlement Agreement
between Petitioner and Patent Owner as business confidential information
pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
This Order does not constitute a final written decision pursuant to
35 U.S.C. § 318(a).
III. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Joint Motion to Terminate (Paper 22) is granted,
and IPR2019-00724 is terminated with respect to Petitioner and Patent
Owner; and
FURTHER ORDERED that the Joint Request to Treat Agreement as
Business Confidential Information (Paper 23) as business confidential
information is granted, and the Agreement (Ex. 2005) shall be kept separate
from the file of Patent 7,576,679 B1, under the provisions of 35 U.S.C.
§ 317(b) and 37 C.F.R. § 42.74(c).

IPR2019-00724
Patent 7,576,679 B1

4
PETITIONER:

David Conrad
Daniel D. Smith
FISH & RICHARDSON P.C.
conrad@fr.com
dsmith@fr.com

PATENT OWNER:

Matthew C. Juren
Barry J. Bumgardner
Joseph P. Oldaker
NELSON BUMGARDNER ALBRITTON P.C.
matthew@nbafirm.com
barry@nbafirm.com
joseph@nbafirm.com