Parties Must Come Clean to Settle a Proceeding

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In Groupon Inc. v. Maxim Integrated Products, Inc., CBM2014-00090, Paper 10 (August 12, 2014), the Board reminded the parties that any agreement or understanding between the patent owner and the 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 that agreement or understanding shall be filed in the Office. 35 U.S.C. § 327(b). The Board added that in order to ensure compliance with 35 U.S.C. § 327(b), and based on the facts of this proceeding, the parties are required to certify in writing that there are no other written or oral agreements or understandings, including any collateral agreements, between them, including but not limited to licenses, covenants not to sue, confidentiality agreements, payment agreements, or other agreements of any kind, that are made in connection with, or in contemplation of, the termination of the instant proceeding. To the extent that there are other agreements as outlined immediately above, the parties shall file such agreements and may request that any such agreement be treated as business confidential information and be kept separate from the files of the involved patent. 37 C.F.R. § 42.74(c).

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