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 IPR2015-01371 and IPR2015-01372
`Patent 8,572,279 B2
`____________
`
`
`Before MICHAEL R. ZECHER, JAMES P. CALVE, and
`JUSTIN T. ARBES, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`
`
`DECISION
`Termination of the Proceedings
`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 IPR2015-01371 and IPR2015-01372
`Patent 8,572,279 B2
`____________
`
`
`Before MICHAEL R. ZECHER, JAMES P. CALVE, and
`JUSTIN T. ARBES, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`
`
`DECISION
`Termination of the Proceedings
`37 C.F.R. §§ 42.72, 42.74
`
`
`
`
`
`IPR2015-01371, IPR2015-01372
`Patent 8,572,279 B2
`
`
`On July 18, 2015, the parties filed a Joint Motion to Terminate in each
`
`of the instant proceedings (Paper 6),1 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 Paper 8, 1; 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 35 U.S.C.
`
`§ 317(b) and 37 C.F.R. § 42.74(c). On August 21, 2015, the parties
`
`complied with our instructions by filing in each proceeding 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).
`
`
`1 The parties filed similar papers in each of the instant proceedings.
`We refer to those filed in Case IPR2015-01371 for convenience.
`
`
`
`2
`
`
`
`IPR2015-01371, IPR2015-01372
`Patent 8,572,279 B2
`
`
`The instant proceedings are still in the preliminary stages. Patent
`
`Owner has not yet filed a preliminary response in either proceeding and we
`
`have not yet entered a decision whether or not to institute an inter partes
`
`review. In the Renewed Joint Motions to Terminate, the parties represent
`
`that the related district court case involving U.S. Patent No. 8,572,279 B2
`
`(“the ’279 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 ’279 patent or related
`
`patents that are pending, dismissed, or on appeal to the U.S. Court of
`
`Appeals for the Federal Circuit. Id. at 2–3. Under these circumstances, we
`
`determine that it is appropriate to terminate the instant proceedings 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.
`
`
`
`3
`
`
`
`IPR2015-01371, IPR2015-01372
`Patent 8,572,279 B2
`
`
`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. 8,572,279 B2, and made available only to Federal Government agencies
`
`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 Motions to
`
`Terminate (Paper 8 in each proceeding) are granted and the instant
`
`proceedings are hereby terminated; and
`
`FURTHER ORDERED that the parties are not authorized to file a
`
`motion to expunge the long form settlement agreement.
`
`
`
`
`
`
`
`4
`
`
`
`IPR2015-01371, IPR2015-01372
`Patent 8,572,279 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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