MAXStick Products Ltd.

Patent Trials and Appeals Board

May 19, 2020

IPR2019-01119 (P.T.A.B. May. 19, 2020)

Trials@uspto.gov Paper 22
571-272-7822 Filed: May 19, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

ICONEX, LLC,
Petitioner,

v.

MAXSTICK PRODUCTS LTD.,
Patent Owner.
____________

IPR2019-01119 (Patent 8,445,104 B2)
IPR2019-01122 (Patent 9,646,517 B2)
IPR2019-01124 (Patent 9,208,699 B2)1

Before JO-ANNE M. KOKOSKI, CHRISTOPHER M. KAISER, and
SHELDON M. MCGEE, Administrative Patent Judges.

KOKOSKI, 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 addresses identical issues in each of three related cases. We
exercise our discretion to issue one Order to be entered in each case.
IPR2019-01119 (8,445,104 B2)
IPR2019-01122 (9,646,517 B2)
IPR2019-01124 (9,208,699 B2)

2
On May 18, 2020, with Board authorization, Petitioner (Iconex, LLC)
and Patent Owner (MAXStick Products Ltd.) filed a Joint Motion to
Terminate each of the above-referenced proceedings (IPR2019-01119,
Paper 20; IPR2019-01122, Paper 22; IPR2019-01124, Paper 19), and a Joint
Request that the settlement agreement be treated as business confidential and
kept separate from the patent file (IPR2019-01119, Paper 21; IPR2019-
01122, Paper 21; IPR2019-01124, Paper 20), along with what the parties
indicate is a copy of their written settlement agreement (Ex. 1033 in each
proceeding).
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.”
Section 317(a) also provides that if no petitioner remains in the inter partes
review, the Office may terminate the review.
In the Joint Motions, the parties represent that they have reached an
agreement resolving their disputes, and that Exhibit 1033 is a true copy of
their written settlement agreement. IPR2019-01119, Paper 20 at 1;
IPR2019-01122, Paper 22 at 1; IPR2019-01124, Paper 19 at 1. The parties
further represent that there are no other agreements or understandings made
in connection with the termination of the proceedings. IPR2019-01119,
Paper 20 at 2; IPR2019-01122, Paper 22 at 2; IPR2019-01124, Paper 19 at 2.
We instituted trials in these proceedings on December 6, 2019, but we
have not yet decided the merits of the proceedings. Under these
circumstances, we determine that it is appropriate to terminate these
IPR2019-01119 (8,445,104 B2)
IPR2019-01122 (9,646,517 B2)
IPR2019-01124 (9,208,699 B2)

3
proceedings without rendering a final written decision. See 37 C.F.R.
§§ 42.72, 42.74. Further, after reviewing the settlement agreement between
Petitioner and Patent Owner, we determine it is appropriate to treat it as
business confidential information and keep it separate from the file of the
patent in each proceeding pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
§ 42.74(c).
Therefore, we grant the Joint Motion to Terminate and the Joint
Request to treat the settlement agreement as business confidential
information in each of these proceedings. This determination does not
constitute a final written decision pursuant to 35 U.S.C. § 318(a).
Accordingly, it is:
ORDERED that the Joint Motions to Terminate (IPR2019-01119,
Paper 20; IPR2019-01122, Paper 22; IPR2019-01124, Paper 19) are granted;
FURTHER ORDERED that the Joint Requests (IPR2019-01119,
Paper 21; IPR2019-01122, Paper 21; IPR2019-01124, Paper 20) to treat the
settlement agreement (Ex. 1033) as business confidential and kept separate
from the respective patent files are granted; and
FURTHER ORDERED that IPR2019-01119, IPR2019-01122, and
IPR2019-01124 are terminated with respect to both Petitioner and Patent
Owner.

IPR2019-01119 (8,445,104 B2)
IPR2019-01122 (9,646,517 B2)
IPR2019-01124 (9,208,699 B2)

4
FOR PETITIONER:

Matias Ferrario
Courtney Dabbiere
Andrew W. Rinehart
KILPATRICK TOWNSEND & STOCKTON L.L.P.
mferrario@kilpatricktownsend.com
arinehart@kilpatricktownsend.com
cdabbiere@kilpatricktownsend.com

FOR PATENT OWNER:
James R. Muldoon
Laura W. Smalley
HARRIS BEACH PLLC
jmuldoon@harrisbeach.com
lsmalley@harrisbeach.com