Human Differential Intelligence, LLC

Patent Trials and Appeals Board

Jan 19, 2021

IPR2020-01611 (P.T.A.B. Jan. 19, 2021)

Trials@uspto.gov Paper 10
571-272-7822 Entered: January 19, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

GOOGLE LLC,
Petitioner,

v.

HUMAN DIFFERENTIAL INTELLIGENCE, LLC,
Patent Owner.

IPR2020-01611
Patent 9,192,861 B2

Before JAMES J. MAYBERRY, KARA L. SZPONDOWSKI, and
STEPHEN E. BELISLE, Administrative Patent Judges.

MAYBERRY, Administrative Patent Judge.

DECISION
Settlement Prior to Institution of Trial
37 C.F.R. § 42.74

IPR2020-01611
Patent 9,192,861 B2

2
I. INTRODUCTION
With the Board’s authorization, Petitioner and Patent Owner
(collectively “the Parties”) filed a Joint Motion to Terminate
Proceeding. Paper 7 (“Joint Motion”). In support of the Joint Motion, the
Parties filed copies of a Settlement and License Agreement (Ex. 2001) and a
Stipulation Regarding Google Products (Ex. 2002) (collectively, “the
Settlement Agreement”), as well as a Joint Request to File Settlement
Agreement as Business Confidential Information, pursuant to 37 C.F.R.
§ 42.74(c) (Paper 8 (“Joint Request”)).
II. DISCUSSION
In the Joint Motion, the Parties represent that they “have settled their
dispute regarding U.S. Patent No. 9,192,861, including both this proceeding
and Patent Owner’s assertion of U.S. Patent No. 9,192,861 in the district
court litigations.” Joint Motion 2. The Parties further represent that the
Settlement Agreent is “[a] true and correct copy of the parties’ settlement
agreement.” Id. at 3.
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
good cause exists to dismiss the petition and terminate this proceeding with
respect to the Parties.
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 patent involved in this proceeding. Joint Request 3. After
reviewing the Settlement Agreement between Petitioner and Patent Owner,
IPR2020-01611
Patent 9,192,861 B2

3
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 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, for the reasons discussed above, it is:
ORDERED that the Joint Motion is granted, and the petition in
IPR2020-01611 is dismissed and this 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 9,192,861 B2, and be 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).

IPR2020-01611
Patent 9,192,861 B2

4
FOR PETITIONER:

Richard F. Giunta
Anant K. Saraswat
WOLF, GREENFIELD & SACKS, P.C.
rgiunta-ptab@wolfgreenfield.com
asaraswat-ptab@wolfgreenfield.com

FOR PATENT OWNER:

Gregory S. Donahue
Andrew G. DiNovo
DINOVO PRICE LLP
gdonahue@dpelaw.com
adinovo@dinovoprice.com