Modern Font Applications, LLC

Patent Trials and Appeals Board

Mar 23, 2022

IPR2022-00436 (P.T.A.B. Mar. 23, 2022)

Trials@uspto.gov Paper 7 571-272-7822 Entered: March 23, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ COINBASE, INC., Petitioner, v. MODERN FONT APPLICATIONS LLC, Patent Owner. _______________ IPR2022-00434 (Patent 8,522,127 B2)1 IPR2022-00435 (Patent 9,886,421 B1) IPR2022-00436 (Patent 9,892,093 B1) ____________ Before KEVIN F. TURNER, AARON W. MOORE, and IFTIKHAR AHMED, Administrative Patent Judges. TURNER, Administrative Patent Judge. DECISION Settlement Prior to Institution of Trial 37 C.F.R. § 42.74 On March 21, 2022, the parties filed a Joint Motion to Terminate Proceedings in each of the above cited proceedings, with joint requests to treat as confidential the Settlement Agreement in each (Papers 5 and 6, in each proceeding). The above filings were authorized pursuant to an email sent by the Board on March 17, 2022. 1 The parties are not authorized to use this case caption, or to file consolidated papers. Cases IPR2022-00434, IPR2022-00435, IPR2022-00436 Patents 8,522,127 B2; 9,886,421 B1; 9,892,093 B1 2 Under 35 U.S.C. § 317(a), applicable to inter partes review proceedings, a proceeding 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. And, “[i]f no petitioner remains in the inter partes review, the Office may terminate the review or proceed to a final written decision under [35 U.S.C. § 318(a)].” Id. These matters are in the preliminary stage; decisions whether to institute trial have not been issued in any of the cases. Under 35 U.S.C. § 317(b), any agreement or understanding between the Patent Owner and a Petitioner, including any collateral agreements referred to in such agreement or understanding, made in connection with, or in contemplation of, the termination of the proceeding, shall be in writing, and a true copy of such agreement or understanding shall be filed in the Office. The Settlement Agreement appears to be a true copy of the agreement between the parties, specifies the instant proceedings, and identifies other matters that are to be settled between the parties. (IPR2022- 00434, Ex. 1050; IPR2022-00435, Ex. 1051; IPR2022-00436, Ex. 1051). Under these circumstances, we determine that it is appropriate to terminate these proceedings. See 37 C.F.R. §§ 42.5(a), 42.71(a), 42.72. This paper does not constitute a final written decision pursuant to 35 U.S.C. § 318(a). Cases IPR2022-00434, IPR2022-00435, IPR2022-00436 Patents 8,522,127 B2; 9,886,421 B1; 9,892,093 B1 3 Accordingly, it is ORDERED that the Joint Motion to Terminate Proceeding (Paper 5 in each proceeding) is granted; FURTHER ORDERED that the Settlement Agreement, (IPR2022- 00434, Ex. 1050; IPR2022-00435, Ex. 1051; IPR2022-00436, Ex. 1051), be treated as business confidential information, be designated “Parties and Board Only,” and be kept separate from the file of the involved patent under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c); and FURTHER ORDERED that these proceedings are terminated. Cases IPR2022-00434, IPR2022-00435, IPR2022-00436 Patents 8,522,127 B2; 9,886,421 B1; 9,892,093 B1 4 PETITIONER: Lori Gordon Grant Hodgson Jingyuan Huang PERKINS COIE LLP gordon-ptab@perkinscoie.com hodgson-ptab@perkinscoie.com huang-ptab@perkinscoie.com PATENT OWNER: Perry S. Clegg JOHNSON & MARTIN, P.A. pclegg@johnsonmartinlaw.com Andrew Baca TRASKBRITT P.C. ajbaca@traskbritt.com