`Tel: 571-272-7822
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`
`Paper 13
`Entered: July 9, 2019
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`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
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`Corporation (“Starbucks”) and Patent Owner, we authorized Starbucks and
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`Patent Owner to file a joint motion to terminate this proceeding with respect
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`to Starbucks and a joint request to keep their settlement agreement as
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`business confidential information. With that authorization, Starbucks and
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`Patent Owner filed a Joint Motion to Terminate with Respect to Starbucks.
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`Paper 11. Starbucks and Patent Owner also filed a settlement agreement
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`(Ex. 2005) and a Joint Request to File Settlement Agreements as Business
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`Confidential Information Under 35 U.S.C. § 317 and 37 C.F.R. § 42.74.
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`Paper 12. For the reasons discussed below, Starbucks and Patent Owner’s
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`Joint Motion to Terminate with Respect to Starbucks and Joint Request to
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`File Settlement Agreements as Business Confidential Information are
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`granted.1
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`Starbucks and Patent Owner indicate that termination of this
`
`proceeding is appropriate because they have settled their disputes involving
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`U.S. Patent No. 9,454,748. Paper 11, 2. Further, Starbucks and Patent
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`Owner represent that there are no other collateral agreements or
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`understandings made that relate to the termination of this IPR. Id. at 2–3. In
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`addition, as Starbucks and Patent Owner indicate, this proceeding is at an
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`early stage, and trial has not been instituted. Id. at 2. Moreover, Starbucks
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`and Patent Owner represent that the “remaining petitioners . . . consent to
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`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.
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`2
`
`
`
`IPR2019-00610
`Patent 9,454,748 B2
`
`Further, Starbucks and Patent Owner indicate that the related district court
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`proceeding between them has been dismissed and that Starbucks has been
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`terminated from the pending related lead district court case. Id. at 3.
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`
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`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
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`this chapter shall be terminated with respect to any petitioner upon the joint
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`request of the petitioner and patent owner, unless the Office has decided the
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`merits of the proceeding before the request for termination is filed.” Further,
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`under 37 C.F.R. § 42.74(b), “[a]ny agreement or understanding between the
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`parties made in connection with, or in contemplation of, the termination of a
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`proceeding shall be in writing and a true copy shall be filed with the Board
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`before termination of the trial.”
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`
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`There are strong public policy reasons to favor settlement between the
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`parties to a proceeding. Office Patent Trial Practice Guide, 77 Fed. Reg.
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`48,756, 48,768 (Aug. 14, 2012). When, as here, the proceeding is still in its
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`preliminary stages and we have not entered a decision on whether or not to
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`institute an inter partes proceeding, we generally expect that the proceeding
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`will terminate after the filing of a settlement agreement. See id. In view of
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`the foregoing, we determine that it is appropriate to terminate this
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`proceeding with respect to Starbucks. See 37 C.F.R. §§ 42.72, 42.74.
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`
`
`It is
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`ORDERED that the request by Starbucks and Patent Owner to treat
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`the filed settlement agreement (Ex. 2005) as business confidential
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`information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is
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`GRANTED; and
`
`3
`
`
`
`IPR2019-00610
`Patent 9,454,748 B2
`
`
`
`FURTHER ORDERED that the request by Starbucks and Patent
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`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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`