Trials@uspto.gov
`571-272-7822
`
`Paper 11
`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.
`____________
`
`Cases IPR2015-01281
`Patent 8,601,154 B2
`____________
`
`
`Before MICHAEL R. ZECHER, JAMES P. CALVE, and
`JUSTIN T. ARBES, Administrative Patent Judges.
`
`CALVE, Administrative Patent Judge.
`
`
`
`DECISION
`Termination of the Proceeding
`37 C.F.R. §§ 42.72, 42.74
`
`
`
`
`571-272-7822
`
`Paper 11
`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.
`____________
`
`Cases IPR2015-01281
`Patent 8,601,154 B2
`____________
`
`
`Before MICHAEL R. ZECHER, JAMES P. CALVE, and
`JUSTIN T. ARBES, Administrative Patent Judges.
`
`CALVE, Administrative Patent Judge.
`
`
`
`DECISION
`Termination of the Proceeding
`37 C.F.R. §§ 42.72, 42.74
`
`
`
`
`
`IPR2015-01281
`Patent 8,601,154 B2
`
`
`On July 18, 2015, the parties filed a Joint Motion to Terminate in the
`
`instant proceeding (Paper 6), a binding term sheet that memorializes the
`
`parties’ settlement agreement (Ex. 2001), and a request (Paper 7) to treat the
`
`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 had been executed, and, if they so
`
`choose, a request to treat the long form settlement agreement as business
`
`confidential information under 37 C.F.R. § 42.74(c). On August 21, 2015,
`
`the parties complied with our instructions by filing a Renewed Joint Motion
`
`to Terminate (Paper 8), a true copy of the long form settlement agreement
`
`(Ex. 2002), and a request (Paper 9) 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).
`
`The instant proceeding is still in the preliminary stages. Patent Owner
`
`has not yet filed a preliminary response and we have not yet entered a
`
`decision whether or not to institute an inter partes review. In the Renewed
`
`Joint Motion to Terminate, the parties represent that the related district court
`
`
`
`2
`
`
`
`IPR2015-01281
`Patent 8,601,154 B2
`
`case involving U.S. Patent No. 8,601,154 B2 (“the ’154 patent”) will be
`
`dismissed without prejudice upon execution of the long form settlement
`
`agreement. Paper 8, 2–4. The parties also identified a number of other
`
`proceedings involving the ’154 patent or related patents that are pending,
`
`dismissed, or on appeal to the U.S. Court of Appeals for the Federal Circuit.
`
`Id. at 3. Under these circumstances, we determine that it is appropriate to
`
`terminate the instant 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 the proceedings are 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.
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that the requests that the binding term sheet (Ex. 2001)
`
`and long form settlement agreement (Ex. 2002) be treated as business
`
`confidential information, kept separate from the file of U.S. Patent
`
`No. 8,601,154 B2, and made available only to Federal Government agencies
`
`
`
`3
`
`
`
`IPR2015-01281
`Patent 8,601,154 B2
`
`on written request, or to any person on a showing of good cause, under
`
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), are granted;
`
`FURTHER ORDERED that the Renewed Joint Motion to
`
`Terminate (Paper 8) is granted and the instant 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
`
`
`
`IPR2015-01281
`Patent 8,601,154 B2
`
`PETITIONER:
`
`J. David Hadden
`Saina S. Shamilov
`David D. Schumann
`FENWICK & WEST LLP
`dhadden-ptab@fenwick.com
`sshamilov-ptab@fenwick.com
`
`
`
`PATENT OWNER:
`
`Charles F. Wieland III
`Robert G. Mukai
`BUCHANAN INGERSOLL & ROONEY PC
`Charles.Wieland@bipc.com
`Robert.Mukai@bipc.com
`
`5
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