RRT Holdings, LLC

Patent Trials and Appeals Board

Jul 7, 2021

IPR2020-01706 (P.T.A.B. Jul. 7, 2021)

Trials@uspto.gov Paper 15
571-272-7822 Date: July 7, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

NUONOSYS, INC.,
Petitioner,

v.

RRT HOLDINGS, LLC,
Patent Owner.
____________

IPR2020-01706
Patent 9,805,351 B2

____________

Before BARRY L. GROSSMAN, BART A. GERSTENBLITH, and
MATTHEW S. MEYERS, Administrative Patent Judges.

GROSSMAN, Administrative Patent Judge.

TERMINATION
Due to Settlement After Institution of Trial
35 U.S.C. § 317; 37 C.F.R. § 42.74

IPR2020-01706
Patent 9,805,351 B2

2

I. INTRODUCTION
Petitioner and Patent Owner (collectively referred to as “the Parties”)
filed a Joint Motion to Terminate (“Joint Motion”) the above-identified
proceeding due to settlement. Paper 13. In support of the Joint Motion, the
Parties filed a Settlement Agreement. Ex. 1056. The Parties further filed a
Joint Request to Treat Settlement Agreement as Business Confidential
Information (“Joint Request”) pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
§ 42.74(c). Paper 14.
II. DISCUSSION
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 the patent owner, unless the Office has decided
the merits of the proceeding before the request for termination is filed.” It is
also provided in 35 U.S.C. § 317(a) that if no petitioner remains in the inter
partes review, the Office may terminate the review.
In the Joint Motion, the Parties represent that they have reached an
agreement to jointly seek termination of this inter partes review proceeding,
and that the filed copy of the Settlement Agreement is a true copy. Joint
Motion 1. The Parties further represent that the Settlement Agreement
resolves all currently pending Patent Office and District Court proceedings
between the Parties involving the above-referenced patent. See id.
Although we instituted trial, no other briefing has occurred. We have
not yet decided the merits of the proceeding, and a final written decision has
not been entered. Notwithstanding that the proceeding has moved beyond
the preliminary stage, the Parties have shown adequately that the termination
of the proceeding is appropriate. Under these circumstances, we determine
IPR2020-01706
Patent 9,805,351 B2

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that good cause exists to terminate the proceeding with respect to the Parties.
The Parties also filed a Joint Request that the Settlement Agreement
be treated as business confidential information and be kept separate from the
file of the patent involved in this inter partes proceeding. Joint Request 1.
After reviewing the Settlement Agreement between the Parties, 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 the Parties as business confidential
information pursuant to 35 U.S.C. § 317(b) and 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 to Terminate is granted, and
IPR2020-01706 is terminated with respect to Petitioner and Patent Owner
pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72; and
FURTHER ORDERED that the Joint Request to Treat Settlement
Agreement as Business Confidential Information is granted, and the
Settlement Agreement shall be kept separate from the file of the above-
referenced patent, and made available only to Federal Government agencies
on written request, or to any person on a showing of good cause, pursuant to
35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).

IPR2020-01706
Patent 9,805,351 B2

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For PETITIONER:
Thomas Cunningham
John Rondini
BROOKS KUSHMAN P.C.
tcunningham@brookskushman.com
jrondini@brookskushman.com

For PATENT OWNER:
Noel Gillespie
PROCOPIO, CORY, HARGREAVES AND SAVITCH, LLP
Noel.gillespie@procopio.com