Investel Capital Corporation

Patent Trials and Appeals Board

Aug 20, 2020

IPR2020-00781 (P.T.A.B. Aug. 20, 2020)

Trials@uspto.gov Paper 16
571-272-7822 Date: August 20, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

UNIFIED PATENTS, LLC,
Petitioner,

v.

INVESTEL CAPITAL CORPORATION
Patent Owner.
____________

IPR2020-00781
Patents 9,936,030 B2
____________

Before JAMESON LEE, JOHN F. HORVATH, and
MONICA S. ULLAGADDI, Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION
Granting Joint Motion to Terminate and
Granting Request to Keep Agreement Separate
37 C.F.R. §§ 42.71, 42.74

IPR2020-00781
Patent 9,936,030 B2

2
DISCUSSION
On August 19, 2020, with Board authorization, the parties filed a Joint
Motion to Terminate (Paper 13, “Motion to Terminate”), a settlement
agreement between the parties (Ex. 1017, “Agreement”), and a request to
keep the Agreement separate from the file of Patent 9,936,030 B2 (Paper 14,
“Request to Keep Agreement Separate”).
Petitioner and Patent Owner represent that they have entered into a
written confidential settlement agreement “that fully resolves this matter.”
Paper 13, 1. A copy of the Agreement has been filed as Exhibit 1017. The
parties represent “that there are no other agreements, oral or written,
between the Parties made in connection with, or in contemplation of, the
termination of the present proceeding and that Exhibit 1017 represents a true
and accurate copy of the agreement between the Parties that resolves the
present proceeding.” Id. “Petitioner and Patent Owner jointly request
termination of the present proceeding.” Id.
Generally, the Board expects that a proceeding will terminate after the
filing of a settlement agreement, unless the Board has already decided the
merits of the proceeding. PTAB Consolidated Trial Practice Guide, 86
(November 2019). This proceeding is at an early stage. We have not issued
a decision on whether to institute an inter partes review. Under these
circumstances, we grant the Motion to Terminate (Paper 13) both respect to
Petitioner and Patent Owner.
We also grant the Request to Keep Agreement Separate (Paper 14).
See 37 C.F.R. § 42.74(c).

IPR2020-00781
Patent 9,936,030 B2

3
Order
It is
ORDERED that the Motion to Terminate (Paper 13) is granted;
FURTHER ORDERED that the Request to Keep Agreement Separate
(Paper 14) is granted;
FURTHER ORDERED that the Agreement (Ex. 1017) shall be treated
as business confidential information, shall be kept separate from the file of
Patent No. 9,936,030, and shall be made available only in accordance with
the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c); and
FURTHER ORDERED that this proceeding is terminated both as to
Petitioner and Patent Owner, and the Petition is dismissed.

PETITIONER:

Ellyar Barazesh
STOEL RIVES LLP
ellyar.barazesh@stoel.com

Jonathan Stroud
David Seastrunk
UNIFIED PATENTS, LLC
jonathan@unifiedpatents.com
david@unifiedpatents.com

PATENT OWNER:

Brad D. Pedersen
Michael P. Gates
Patterson Thuente Pedersen, P.A.
pedersen@ptslaw.com
gates@ptslaw.com