`571-272-7822
`
` Paper 15
` Entered: August 25, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMAZON.COM, INC.,
`Petitioner,
`
`v.
`
`SIMPLEAIR, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01000
`Patent 7,035,914 B1
`
`
`
`Before HOWARD B. BLANKENSHIP, MICHAEL R. ZECHER, and
`JUSTIN T. ARBES, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`DECISION
`Termination of the Proceeding
`37 C.F.R. §§ 42.72, 42.74
`
`
`
`
`
`IPR2015-01000
`Patent 7,035,914 B1
`
`
`I. DISCUSSION
`On July 18, 2015, the parties filed a Joint Motion to Terminate this
`proceeding (Paper 10), a binding term sheet that memorializes the parties’
`settlement agreement (Ex. 2003), and a request (Paper 11) to treat this
`settlement agreement as business confidential information under 35 U.S.C.
`§ 317(b) and 37 C.F.R. § 42.74(c). After reviewing the binding term sheet,
`we informed the parties via email correspondence on July 27, 2015, that the
`papers were insufficient because the binding term sheet references a long
`form settlement agreement. See 35 U.S.C. § 317(b) (“[a]ny 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 an inter partes
`review . . . shall be in writing and a true copy of such agreement or
`understanding shall be filed in the Office before the termination of the inter
`partes review as between the parties”). We instructed the parties to file the
`long form settlement agreement once it has been executed, and, if they so
`choose, a request to treat this settlement agreement as business confidential
`information. On August 21, 2015, the parties complied with our instructions
`by filing a Renewed Joint Motion to Terminate (Paper 12), a true copy of the
`long form settlement agreement (Ex. 2004), and a request (Paper 13) to treat
`the long form settlement agreement as business confidential information
`under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`This proceeding is still in its preliminary stages. Although Patent
`Owner, SimpleAir, Inc. (“SimpleAir”), timely filed a Preliminary Response
`(Paper 9), we have not yet entered a decision whether or not to institute an
`inter partes review. In the Renewed Joint Motion to Terminate this
`
`
`
`2
`
`
`
`IPR2015-01000
`Patent 7,035,914 B1
`
`proceeding, the parties represent that the related district court case involving
`U.S. Patent No. 7,035,914 B1 (“the ’914 patent”) will be dismissed without
`prejudice upon execution of the long form settlement agreement. Paper 12,
`2–4. The parties also identified a number of other proceedings involving the
`’914 patent or related patents that are pending, dismissed, or on appeal to the
`United States Court of Appeals for the Federal Circuit. Id. at 3. Under these
`circumstances, we determine that it is appropriate to terminate this
`proceeding without rendering any further decisions. See 37 C.F.R. § 42.72.
`On August 23, 2015, the parties submitted, via email to
`Trials@uspto.gov, a request for authorization to file a Motion to Expunge
`the long form settlement agreement if this proceeding is terminated “to
`ensure that the confidential settlement agreement will remain confidential in
`the future,” citing 37 C.F.R. §§ 42.20 and 42.56. Pursuant to 35 U.S.C.
`§ 317(b), a true copy of the parties’ settlement agreement “shall be filed in
`the Office,” and “shall be made available only to Federal Government
`agencies on written request, or to any person on a showing of good cause.”
`See Rules of Practice for Trials Before the Patent Trial and Appeal Board
`and Judicial Review of Patent Trial and Appeal Board Decisions; Final Rule,
`77 Fed. Reg. 48,612, 48,649–50 (Aug. 14, 2012). Thus, we see no sufficient
`basis to expunge the long form settlement agreement from the record, and
`order that the parties are not authorized to file a Motion to Expunge.
`
`
`II. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the requests to treat the binding term sheet (Ex. 2003)
`and the long form settlement agreement (Ex. 2004) as business confidential
`
`
`
`3
`
`
`
`IPR2015-01000
`Patent 7,035,914 B1
`
`information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) are
`GRANTED;
`FURTHER ORDERED that the parties’ Renewed Joint Motion to
`Terminate this proceeding is GRANTED, and this proceeding is hereby
`terminated; and
`FURTHER ORDERED that the parties are not authorized to file a
`Motion to Expunge the long form settlement agreement.
`
`
`
`4
`
`
`
`IPR2015-01000
`Patent 7,035,914 B1
`
`For PETITIONER:
`
`J. David Hadden
`Saina S. Shamilov
`David D. Schumann
`Fenwick & West LLP
`dhadden@fenwick.com
`sshamilov@fenwick.com
`dschumann@fenwick.com
`
`
`
`For PATENT OWNER:
`
`Charles F. Wieland III
`Robert G. Mukai
`Buchanan, Ingersoll & Rooney P.C.
`charles.wieland@bipc.com
`robert.mukai@bipc.com
`
`
`
`
`5
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