`Tel: 571-272-7822
`
`
`Paper 13
`Entered: July 9, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`STARBUCKS CORPORATION; AMERICAN MULTI-CINEMA, INC.;
`AMC ENTERTAINMENT HOLDINGS, INC.; BOSTON MARKET
`CORPORATION; MOBO SYSTEMS, INC.; MCDONALD’S
`CORPORATION; MCDONALD’S USA; PANDA RESTAURANT
`GROUP, INC.; PANDA EXPRESS INC.; PAPA JOHN’S
`INTERNATIONAL, INC.; STAR PAPA LP; and
`PAPA JOHN’S USA, INC.
`Petitioner,
`
`v.
`
`FALL LINE PATENTS, LLC,
`Patent Owner.
`____________
`
`Case IPR2019-00610
`Patent 9,454,748 B2
`____________
`
`
`Before MICHELLE N. WORMMEESTER, SHEILA F. McSHANE, and
`JOHN R. KENNY, Administrative Patent Judges.
`
`KENNY, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Joint Motion to Terminate with Respect to Starbucks and
`Joint Request to File Settlement Agreement
`as Business Confidential Information
`37 C.F.R. §§ 42.71(a), 42.74
`
`
`
`
`
`IPR2019-00610
`Patent 9,454,748 B2
`
`
`On June 26, 2019, in response to a joint email request from Starbucks
`
`Corporation (“Starbucks”) and Patent Owner, we authorized Starbucks and
`
`Patent Owner to file a joint motion to terminate this proceeding with respect
`
`to Starbucks and a joint request to keep their settlement agreement as
`
`business confidential information. With that authorization, Starbucks and
`
`Patent Owner filed a Joint Motion to Terminate with Respect to Starbucks.
`
`Paper 11. Starbucks and Patent Owner also filed a settlement agreement
`
`(Ex. 2005) and a Joint Request to File Settlement Agreements as Business
`
`Confidential Information Under 35 U.S.C. § 317 and 37 C.F.R. § 42.74.
`
`Paper 12. For the reasons discussed below, Starbucks and Patent Owner’s
`
`Joint Motion to Terminate with Respect to Starbucks and Joint Request to
`
`File Settlement Agreements as Business Confidential Information are
`
`granted.1
`
`Starbucks and Patent Owner indicate that termination of this
`
`proceeding is appropriate because they have settled their disputes involving
`
`U.S. Patent No. 9,454,748. Paper 11, 2. Further, Starbucks and Patent
`
`Owner represent that there are no other collateral agreements or
`
`understandings made that relate to the termination of this IPR. Id. at 2–3. In
`
`addition, as Starbucks and Patent Owner indicate, this proceeding is at an
`
`early stage, and trial has not been instituted. Id. at 2. Moreover, Starbucks
`
`and Patent Owner represent that the “remaining petitioners . . . consent to
`
`and do not oppose termination of Starbucks from this proceeding.” Id.
`
`
`1 Starbucks and Patent Owner filed only one settlement agreement (Ex.
`2005), so their joint request to file settlement agreements as business
`confidential information is granted only with respect to that filed agreement.
`
`2
`
`
`
`IPR2019-00610
`Patent 9,454,748 B2
`
`Further, Starbucks and Patent Owner indicate that the related district court
`
`proceeding between them has been dismissed and that Starbucks has been
`
`terminated from the pending related lead district court case. Id. at 3.
`
`
`
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
`
`this chapter shall be terminated with respect to any petitioner upon the joint
`
`request of the petitioner and patent owner, unless the Office has decided the
`
`merits of the proceeding before the request for termination is filed.” Further,
`
`under 37 C.F.R. § 42.74(b), “[a]ny agreement or understanding between the
`
`parties made in connection with, or in contemplation of, the termination of a
`
`proceeding shall be in writing and a true copy shall be filed with the Board
`
`before termination of the trial.”
`
`
`
`There are strong public policy reasons to favor settlement between the
`
`parties to a proceeding. Office Patent Trial Practice Guide, 77 Fed. Reg.
`
`48,756, 48,768 (Aug. 14, 2012). When, as here, the proceeding is still in its
`
`preliminary stages and we have not entered a decision on whether or not to
`
`institute an inter partes proceeding, we generally expect that the proceeding
`
`will terminate after the filing of a settlement agreement. See id. In view of
`
`the foregoing, we determine that it is appropriate to terminate this
`
`proceeding with respect to Starbucks. See 37 C.F.R. §§ 42.72, 42.74.
`
`
`
`It is
`
`ORDERED that the request by Starbucks and Patent Owner to treat
`
`the filed settlement agreement (Ex. 2005) as business confidential
`
`information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is
`
`GRANTED; and
`
`3
`
`
`
`IPR2019-00610
`Patent 9,454,748 B2
`
`
`
`FURTHER ORDERED that the request by Starbucks and Patent
`
`Owner to terminate this proceeding with respect to Starbucks is GRANTED.
`
`
`
`PETITIONER:
`
`Tara Elliott
`tara.elliott@lw.com
`
`Lisa Nguyen
`lisa.nguyen@lw.com
`
`Robert Reckers
`rreckers@shb.com
`
`Ricardo Bonilla
`rbonilla@fr.com
`
`
`
`
`PATENT OWNER:
`
`Terry Watt
`terry.watt@crowedunlevy.com
`
`Matthew Antonelli
`matt@ahtlawfirm.com
`
`Michael Ellis
`michael@ahtlawfirm.com
`
`Larry Thompson
`larry@ahtlawfirm.com
`
`
`
`
`
`4
`
`
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