Nant Holdings IP, LLC

Patent Trials and Appeals Board

Feb 18, 2022

IPR2021-01387 (P.T.A.B. Feb. 18, 2022)

Trials@uspto.gov Paper 12 571-272-7822 Entered: February 18, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ BANK OF AMERICA, N.A., Petitioner, v. NANT HOLDINGS IP, LLC, Patent Owner. ____________ IPR2021-01387 Patent 8,326,038 B2 ____________ Before JAMESON LEE, ROBERT J. WEINSCHENK, and ELIZABETH M. ROESEL, Administrative Patent Judges. LEE, Administrative Patent Judge. DECISION Settlement Prior to Institution of Trial 37 C.F.R. § 42.74 IPR2021-01387 Patent 8,326,038 B2 2 INTRODUCTION With our emailed authorization, the parties filed a “Joint Motion to Dismiss Petition and Terminate Inter Partes Review Proceeding.” Paper 11 (“Joint Motion to Terminate”). With our emailed authorization, the parties also filed their settlement agreement as Exhibit 1046. Paper 11, 1. Exhibit 1046 was filed as a public paper and the parties have not requested that Exhibit 1046 be treated as business confidential information under 37 C.F.R. § 42.74(c). The parties state that they “have settled their dispute with respect to the ’038 Patent and have reached an agreement to terminate this proceeding.” Id. at 4. The parties represent that a true and correct copy of their agreement reflected in Exhibit 1046 has been filed, which is a final settlement and resolution of all disputes relating to Patent No. 8,326,038 B2, and that “there are no other collateral agreements or understandings made in connection with, or in contemplation of, the termination sought.” Paper 11, 4-5. DISCUSSION 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. Consolidated Trial Practice Guide, 86 (November 2019).1 This proceeding is at an early stage. We have not issued a decision on whether to institute an inter partes review. There is no petitioner entity other than Bank of America, N.A. Under these circumstances, we grant the Joint Motion to Terminate as to both Petitioner and Patent Owner. 1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. IPR2021-01387 Patent 8,326,038 B2 3 ORDER It is ORDERED that the Joint Motion to Terminate (Paper 11) is granted both as to Petitioner and to Patent Owner; and FURTHER ORDERED that this proceeding is terminated both as to Petitioner and to Patent Owner, and the Petition is dismissed. IPR2021-01387 Patent 8,326,038 B2 4 For PETITIONER: Dustin J. Edwards Michael A. Tomasulo WINSTON & STRAWN LLP dedwards@winston.com mtomasulo@winston.com For PATENT OWNER: James M. Glass Todd M. Briggs QUINN EMANUEL URQUHART & SULLIVAN, LLP nantworksvboa@quinnemanuel.com