HOFMANN et al

Patent Trials and Appeals Board

Mar 14, 2022

IPR2022-00287 (P.T.A.B. Mar. 14, 2022)

Trials@uspto.gov Paper No. 6 571-272-7822 Entered: March 14, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD UNIFIED PATENTS, LLC, Petitioner, v. CALLSTAT SOLUTIONS LLC, Patent Owner. IPR2022-00287 Patent 6,236,983 B1 Before KARL D. EASTHOM, THOMAS L. GIANNETTI, and MICHAEL T. CYGAN, Administrative Patent Judges. EASTHOM, Administrative Patent Judge. DECISION Settlement Prior to Institution of Trial 37 C.F.R. § 42.74 IPR2022-00287 Patent 6,236,983 B1 2 I. INTRODUCTION On March 2, 2022, with authorization of the Board, the parties filed a Joint Motion to Terminate the above-identified proceeding due to settlement. Paper 4 (“Joint Motion”). The parties also filed a copy of a Confidential Settlement and License Agreement (“Settlement Agreement”) governing their settlement. Ex. 1018. The parties filed a joint request that the Settlement Agreement be treated as business confidential information and kept separate from the publicly available file of the above-captioned proceeding. Paper 5 (“Joint Request”). II. DISCUSSION In the Joint Motion, the Parties represent that they have reached an agreement to jointly seek dismissal of the petition and termination of the above-identified inter partes review proceeding, and that the filed copy of the Settlement Agreement is “a true and accurate copy of the agreement between the Parties that resolves the present proceeding.” Paper 4, 1. The Parties further represent that their Settlement Agreement resolves their dispute concerning the above-identified patent at issue. Id. This proceeding is at an early stage, and we have not yet decided whether to institute a trial in the proceeding. In view of the early stage of the proceeding and the settlement between the Parties, we determine that it is appropriate to dismiss the petition and terminate the proceeding. Further, after reviewing the parties’ Settlement Agreement, 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 the parties as business confidential information and to keep the Settlement Agreement separate from the file of IPR2022-00287 Patent 6,236,983 B1 3 the patent in the above-captioned proceeding pursuant to 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 Accordingly, it is ORDERED that the Joint Motion to terminate the above-identified proceeding is granted, the petition is dismissed, and the proceeding is terminated; and FURTHER ORDERED that the Joint Request is granted and the Settlement Agreement shall be kept separate from the file of Patent 6,236,983 B1 and made 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). IPR2022-00287 Patent 6,236,983 B1 4 PETITIONER: Michelle Aspen Roshan Mansinghani UNIFIED PATENTS, LLC michelle@unifiedpatents.com roshan@unifiedpatents.com PATENT OWNER: Kowert, Hood, Munyon, Rankin & Goetzel, P.C. 1120 S. Capital of Texas HWY Building 2, Suite 300 Austin, TX 78746