Netcom Global Solutions LLC

Patent Trials and Appeals Board

Mar 4, 2022

IPR2021-01401 (P.T.A.B. Mar. 4, 2022)

Trials@uspto.gov Paper 9 571-272-7822 Date: March 4, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE ______________________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ______________________________ UNIFIED PATENTS, LLC, Petitioner, v. NETCOM GLOBAL SOLUTIONS LLC, Patent Owner. ______________________________ IPR2021-01401 Patent 8,316,128 B2 ______________________________ Before JUSTIN T. ARBES, KEVIN C. TROCK, and SEAN P. O’HANLON, Administrative Patent Judges. O’HANLON, Administrative Patent Judge. DECISION Settlement Prior to Institution of Trial 37 C.F.R. § 42.74 IPR2021-01401 Patent 8,316,128 B2 2 I. INTRODUCTION With the Board’s authorization, Unified Patents, LLC (“Petitioner”) and Netcom Global Solutions LLC (“Patent Owner”) (collectively, “the Parties”) filed a Joint Motion to Terminate in the above-identified proceeding. Paper 6 (“Joint Motion”). Along with the Joint Motion, the Parties filed a copy of a Settlement Agreement between Petitioner and Patent Owner. Ex. 1034 (“Settlement Agreement”). The Parties also filed a Joint Request that the Settlement Agreement be treated as business confidential information and kept separate from the file of U.S. Patent No. 8,316,128 B2 (“the ’128 patent”). Paper 7 (“Joint Request”). II. DISCUSSION In the Joint Motion, the Parties represent that the Settlement Agreement resolves the Parties’ dispute involving the ’128 patent. Joint Motion 1. The Parties represent that the Settlement Agreement is a true and accurate copy of the agreement between the Parties that resolves the present proceeding, and 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. 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 good cause exists to dismiss the Petition and terminate the proceeding with respect to the Parties. In the Joint Request, the Parties request that the Settlement Agreement be treated as business confidential information and kept separate from the IPR2021-01401 Patent 8,316,128 B2 3 file of the ’128 patent. Joint Request 1. After reviewing the Settlement Agreement, we find that it contains confidential business information regarding the terms of settlement. Thus, good cause exists to treat the Settlement Agreement 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, it is: ORDERED that the Joint Motion to Terminate is granted, the Petition is dismissed, and the proceeding is terminated with respect to Petitioner and Patent Owner; and FURTHER ORDERED that the Joint Request to treat the Settlement Agreement as business confidential information is granted and the Settlement Agreement shall be kept separate from the file of U.S. Patent No. 8,316,128 B2, 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). IPR2021-01401 Patent 8,316,128 B2 4 For PETITIONER: David C. Seastrunk Roshan Mansinghani UNIFIED PATENTS, LLC david@unifiedpatents.com roshan@unifiedpatents.com For PATENT OWNER: Peter J. Corcoran III CORCORAN IP LAW PLLC peter@corcoranip.com M. Scott Fuller GARTEISER HONEA PLLC sfuller@ghiplaw.com