AGIS Software Development LLC

Patent Trials and Appeals Board

Mar 17, 2022

IPR2021-01307 (P.T.A.B. Mar. 17, 2022)

Trials@uspto.gov Paper 17 571-272-7822 Entered: March 17, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ UBER TECHNOLOGIES, INC., Petitioner, v. AGIS SOFTWARE DEVELOPMENT LLC, Patent Owner. ____________ IPR2021-01306 (Patent 10,341,838 B2) IPR2021-01307 (Patent 10,299,100 B2) IPR2021-01308 (Patent 10,299,100 B2)1 ____________ Before CHARLES J. BOUDREAU, DANIEL J. GALLIGAN, and IFTIKHAR AHMED, Administrative Patent Judges. AHMED, Administrative Patent Judge. TERMINATION Due to Settlement After Institution of Trial 35 U.S.C. § 317; 37 C.F.R. § 42.74 1 We exercise our discretion to issue one Order to be entered in each proceeding. The parties are not authorized to use a multiple-case caption. IPR2021-01306 (Patent 10,341,838 B2) IPR2021-01307 (Patent 10,299,100 B2) IPR2021-01308 (Patent 10,299,100 B2) 2 DISCUSSION Petitioner Uber Technologies, Inc. (“Uber”) and Patent Owner AGIS Software Development LLC (“AGIS”) filed (1) a Joint Motion to Terminate Pursuant to 35 U.S.C. § 317 (Paper 14 (“Mot.”)) based on a settlement agreement between them, (2) a true copy of their written settlement agreement (Ex. 1038), and (3) a Joint Request to Keep Separate Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74 (Paper 15).2 Uber and AGIS indicate that they have resolved their underlying dispute and have agreed to terminate these proceedings. Mot. 1. The parties filed what they represent is a true and correct copy of their written settlement agreement and indicate that it resolves these proceedings as well as the related district court litigation, which has now been dismissed with prejudice. Id. The parties certify that there are no collateral agreements or understandings, oral or written, made in connection with, or in contemplation of, the termination of these proceeding. Id. at 2. The parties state that termination is appropriate because the proceedings are in an early stage and the Board has not yet decided the merits. Id. at 1-2. Generally, the Board expects that a proceeding will terminate with respect to a petitioner after the filing of a settlement agreement. See 35 U.S.C. § 317(a) (“An 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 2 Our citations to Papers and Exhibits are to those filed in IPR2021-01306. Similar Papers and Exhibits have been filed in each of the other identified proceedings. IPR2021-01306 (Patent 10,341,838 B2) IPR2021-01307 (Patent 10,299,100 B2) IPR2021-01308 (Patent 10,299,100 B2) 3 of the proceeding before the request for termination is filed.”); 37 C.F.R. § 42.72 (“The Board may terminate a trial without rendering a final written decision, where appropriate, including . . . pursuant to a joint request under 35 U.S.C. 317(a) . . . .”); see also Patent Trial and Appeal Board Consolidated Trial Practice Guide at 86 (Nov. 2019)3 (“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.” (citing 35 U.S.C. §§ 317(a), 327)). Here, trials have been instituted but the merits of these proceedings have not yet been decided. Accordingly, we terminate these proceedings. In their Joint Request to Keep Separate, the parties ask that the settlement agreement (Ex. 1038) be treated as business confidential information and be kept separate from the file of the patent in each of the proceedings. After reviewing the settlement agreement, we find that the settlement agreement contains confidential business information regarding the terms of settlement. Accordingly, we grant the Joint Request to Keep Separate. See 35 U.S.C. § 317(b) (“At the request of a party to the proceeding, the agreement or understanding shall be treated as business confidential information, shall be kept separate from the file of the involved patents, and shall be made available only to Federal Government agencies on written request, or to any person on a showing of good cause.”); see also 37 C.F.R. § 42.74(c) (same). This Decision does not constitute a final written decision pursuant to 35 U.S.C. § 318(a). 3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. IPR2021-01306 (Patent 10,341,838 B2) IPR2021-01307 (Patent 10,299,100 B2) IPR2021-01308 (Patent 10,299,100 B2) 4 ORDER Accordingly, it is ORDERED that the Joint Motion to Terminate (Paper 14 in IPR2021- 01306, Paper 15 in IPR2021-01307, and Paper 16 in IPR2021-01308) is granted; FURTHER ORDERED that the Joint Request to Keep Separate (Paper 15 in IPR2021-01306, Paper 16 in IPR2021-01307, and Paper 17 in IPR2021-01308) is granted; FURTHER ORDERED that the settlement agreement (Ex. 1038 in each of the three proceedings) be treated as business confidential information, kept separate from the file of the above-referenced patent in each proceeding, 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); and FURTHER ORDERED that these proceedings are terminated. IPR2021-01306 (Patent 10,341,838 B2) IPR2021-01307 (Patent 10,299,100 B2) IPR2021-01308 (Patent 10,299,100 B2) 5 For PETITIONER: Naveen Modi Joseph Palys Phillip Citroen PAUL HASTINGS LLP naveenmodi@paulhastings.com josephpalys@paulhastings.com phillipcitroen@paulhastings.com FOR PATENT OWNER: Vincent J. Rubino Peter Lambrianakos Enrique W. Iturralde FABRICANT LLP vrubino@fabricantllp.com plambrianakos@fabricantllp.com eiturralde@fabricantllp.com