UNIVERSAL SECURE REGISTRY, LLC

Patent Trials and Appeals Board

Jan 6, 2021

IPR2020-01224 (P.T.A.B. Jan. 6, 2021)

Trials@uspto.gov Paper 10
571-272-7822 Date: January 6, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

APPLE INC.,
Petitioner,

v.

UNIVERSAL SECURE REGISTRY, LLC,
Patent Owner.

IPR2020-01220 (Patent 9,947,000 B2)
IPR2020-01221 (Patent 9,947,000 B2)
IPR2020-01222 (Patent 9,928,495 B2)
IPR2020-01223 (Patent 9,928,495 B2)
IPR2020-01224 (Patent 10,163,103 B2)
IPR2020-01225 (Patent 10,163,103 B2)

Before PATRICK R. SCANLON, GEORGIANNA W. BRADEN, and
JASON W. MELVIN, Administrative Patent Judges.

MELVIN, Administrative Patent Judge.

DECISION
Settlement Prior to Institution of Trial
37 C.F.R. § 42.74

IPR2020-01220 (Patent 9,947,000 B2)
IPR2020-01221 (Patent 9,947,000 B2)
IPR2020-01222 (Patent 9,928,495 B2)
IPR2020-01223 (Patent 9,928,495 B2)
IPR2020-01224 (Patent 10,163,103 B2)
IPR2020-01225 (Patent 10,163,103 B2)

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I. INTRODUCTION
With the Board’s authorization, Petitioner and Patent Owner
(collectively “the Parties”) filed a Joint Motion to Terminate in each of the
above-referenced proceedings due to settlement. Paper 8 (“Joint Motion”).1
In support of each Joint Motion, the Parties filed a copy of a Release and
Covenant Agreement (Ex. 1016 (“Settlement Agreement”)), as well
as a Joint Motion to File Agreement as Business Confidential Information
pursuant to 37 C.F.R. § 42.74(c) (Paper 9 (“Joint Request”)).
II. DISCUSSION
In the Joint Motions, the Parties represent that they have reached an
agreement to terminate the proceedings. Joint Motion 1. The Parties further
represent that the Settlement Agreement is a true copy, and “that there are no
other collateral agreements or understandings, oral or written, between the
parties made in connection with, or in contemplation of, the termination of”
the proceedings. Id. at 1–2.
The above-referenced proceedings are each at an early stage, and we
have not yet decided whether to institute trials. In view of the early stage of
the proceedings and the settlement between the Parties, we determine that
good cause exists to dismiss the petitions and terminate the proceedings with
respect to the Parties.

1 For expediency, we refer to papers and exhibits filed in IPR2020-01220.
Similar papers and exhibits were filed in each of the above-referenced
proceedings.
IPR2020-01220 (Patent 9,947,000 B2)
IPR2020-01221 (Patent 9,947,000 B2)
IPR2020-01222 (Patent 9,928,495 B2)
IPR2020-01223 (Patent 9,928,495 B2)
IPR2020-01224 (Patent 10,163,103 B2)
IPR2020-01225 (Patent 10,163,103 B2)

3
In the Joint Requests, the Parties request that the Settlement
Agreement be treated as business confidential information and be kept
separate from the files of the patents involved in these proceedings. Joint
Request 1. After reviewing the Settlement Agreement between Petitioner
and Patent Owner, 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
Petitioner and Patent Owner 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, for the reasons discussed above, it is:
ORDERED that the Joint Motions to Terminate are granted, and the
petitions in IPR2020-01220, IPR2020-01221, IPR2020-01222, IPR2020-
01223, IPR2020-01224, and IPR2020-01225 are dismissed and these
proceedings are terminated; and
FURTHER ORDERED that the Joint Requests are granted, and the
Settlement Agreement shall be kept separate from the files of
Patents 9,947,000 B2, 9,928,495 B2, and 10,163,103 B2 and be 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).
IPR2020-01220 (Patent 9,947,000 B2)
IPR2020-01221 (Patent 9,947,000 B2)
IPR2020-01222 (Patent 9,928,495 B2)
IPR2020-01223 (Patent 9,928,495 B2)
IPR2020-01224 (Patent 10,163,103 B2)
IPR2020-01225 (Patent 10,163,103 B2)

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FOR PETITIONER:

Monica Grewal
Benjamin Fernandez
Scott Bertulli
WILMER CUTLER PICKERING HALE AND DORR LLP
monica.grewal@wilmerhale.com
ben.fernandez@wilmerhale.com
scott.bertulli@wilmerhale.com

FOR PATENT OWNER:

Christopher A. Mathews
Tigran Guledjian
James M. Glass
Nima Hefazi
Razmig Messerian
QUINN EMANUEL URQUHART & SULLIVAN LLP
chrismathews@quinnemanuel.com
tigranguledjian@quinnemanuel.com
jimglass@quinnemanuel.com
nimahefazi@quinnemanuel.com
razmesserian@quinnemanuel.com