Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper 22
`Date: September 10, 2020
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`HAMMOND DEVELOPMENT INTERNATIONAL, INC.,
`Patent Owner.
`____________
`
`IPR2020-00214 (Patent 9,716,732), IPR2020-00298 (Patent 9,456,040),
`IPR2020-00305 (Patent 9,716,732), IPR2020-00306 (Patent 10,193,935),
`IPR2020-00411 (Patent 9,420,011), IPR2020-00412 (Patent 9,456,040),
`IPR2020-00413 (Patent 10,193,935), IPR2020-00414 (Patent 9,705,937),
`IPR2020-00415 (Patent 9,705,937)1
`____________
`
`
`
`Before MICHELLE N. WORMMEESTER, AMBER L. HAGY, and
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`
`HAGY, Administrative Patent Judge.
`
`
`
`
`TERMINATION
`Due to Settlement After Institution of Trial
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`
`1 We exercise our discretion to issue one order to be entered in each case.
`The parties are not authorized to use a caption identifying multiple cases.
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 22
`Date: September 10, 2020
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`HAMMOND DEVELOPMENT INTERNATIONAL, INC.,
`Patent Owner.
`____________
`
`IPR2020-00214 (Patent 9,716,732), IPR2020-00298 (Patent 9,456,040),
`IPR2020-00305 (Patent 9,716,732), IPR2020-00306 (Patent 10,193,935),
`IPR2020-00411 (Patent 9,420,011), IPR2020-00412 (Patent 9,456,040),
`IPR2020-00413 (Patent 10,193,935), IPR2020-00414 (Patent 9,705,937),
`IPR2020-00415 (Patent 9,705,937)1
`____________
`
`
`
`Before MICHELLE N. WORMMEESTER, AMBER L. HAGY, and
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`
`HAGY, Administrative Patent Judge.
`
`
`
`
`TERMINATION
`Due to Settlement After Institution of Trial
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`
`1 We exercise our discretion to issue one order to be entered in each case.
`The parties are not authorized to use a caption identifying multiple cases.
`
`
`
`
`
`IPR2020-00214 (Patent 9,716,732), IPR2020-00298 (Patent 9,456,040),
`IPR2020-00305 (Patent 9,716,732), IPR2020-00306 (Patent 10,193,935),
`IPR2020-00411 (Patent 9,420,011), IPR2020-00412 (Patent 9,456,040),
`IPR2020-00413 (Patent 10,193,935), IPR2020-00414 (Patent 9,705,937),
`IPR2020-00415 (Patent 9,705,937)
`
`
`
`INTRODUCTION
`I.
`With the Board’s authorization, Petitioner and Patent Owner
`(collectively referred to as “the Parties”) filed Joint Motions to Terminate
`the above-identified proceedings due to settlement. Paper 20 (“Joint
`Motion”). 2 In support of the Joint Motions, the Parties filed a Confidential
`Covenant Not to Sue (Ex. 1023, “Covenant”) and Joint Stipulation of Partial
`Dismissal (Ex. 1024, “Stipulation”). The Parties further filed Joint Requests
`to Treat the Covenant as Business Confidential Information pursuant to 35
`U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 22 (“Joint Request”).
`II. DISCUSSION
`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 the patent owner, unless the Office has decided
`the merits of the proceeding before the request for termination is filed.” It is
`also provided in 35 U.S.C. § 317(a) that if no petitioner remains in the inter
`partes review, the Office may terminate the review.
`In the Joint Motions, the Parties represent that they have reached an
`agreement jointly to seek termination of these inter partes review
`proceedings, and that the filed copies of the Covenant and Stipulation are
`true and complete copies. Joint Motion 1. The Parties further represent that
`the Covenant and Stipulation resolve all currently pending Patent Office and
`
`
`2 All citations are to IPR2020-00214 with the understanding that the other
`proceedings include papers having substantially the same substantive
`content.
`
`2
`
`
`
`IPR2020-00214 (Patent 9,716,732), IPR2020-00298 (Patent 9,456,040),
`IPR2020-00305 (Patent 9,716,732), IPR2020-00306 (Patent 10,193,935),
`IPR2020-00411 (Patent 9,420,011), IPR2020-00412 (Patent 9,456,040),
`IPR2020-00413 (Patent 10,193,935), IPR2020-00414 (Patent 9,705,937),
`IPR2020-00415 (Patent 9,705,937)
`
`District Court proceedings between the Parties involving the above-
`referenced patents. Id. at 1–2.
`We instituted trials on the above-identified proceedings. We have not
`yet decided the merits of the proceedings, however, and final written
`decisions have not been entered. Notwithstanding that the proceedings have
`moved beyond the preliminary stage, the Parties have shown adequately that
`the termination of the proceedings is appropriate. Under these
`circumstances, we determine that good cause exists to terminate the
`proceedings with respect to the Parties.
`The Parties also filed Joint Requests that the Covenant be treated as
`business confidential information and be kept separate from the files of the
`respective patents involved in these inter partes proceedings. Paper 22, 1.
`After reviewing the Covenant between Petitioner and Patent Owner, we find
`that the Covenant contains confidential business information regarding the
`terms of settlement. We determine that good cause exists to treat the
`Covenant between Petitioner and Patent Owner as business confidential
`information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`This Order does not constitute a final written decision pursuant to
`35 U.S.C. § 318(a).
`
`III. ORDER
`Accordingly, for the reasons discussed above, it is:
`ORDERED that the Joint Motions to Terminate are granted, and
`IPR2020-00214, IPR2020-00298, IPR2020-00305, IPR2020-00306,
`IPR2020-00411, IPR2020-00412, IPR2020-00413, IPR2020-00414,
`IPR2020-00415 are terminated with respect to Petitioner and Patent Owner
`
`3
`
`
`
`IPR2020-00214 (Patent 9,716,732), IPR2020-00298 (Patent 9,456,040),
`IPR2020-00305 (Patent 9,716,732), IPR2020-00306 (Patent 10,193,935),
`IPR2020-00411 (Patent 9,420,011), IPR2020-00412 (Patent 9,456,040),
`IPR2020-00413 (Patent 10,193,935), IPR2020-00414 (Patent 9,705,937),
`IPR2020-00415 (Patent 9,705,937)
`
`pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72; and
`
`FURTHER ORDERED that the Joint Requests to Treat the Settlement
`Agreement as Business Confidential Information are granted, and the
`Covenant shall be kept separate from the files of the above-referenced
`patents, and made available only to Federal Government agencies on written
`request, or to any person on a showing of good cause, pursuant to 35 U.S.C.
`§ 317(b) and 37 C.F.R. § 42.74(c).
`
`
`
`4
`
`
`
`IPR2020-00214 (Patent 9,716,732), IPR2020-00298 (Patent 9,456,040),
`IPR2020-00305 (Patent 9,716,732), IPR2020-00306 (Patent 10,193,935),
`IPR2020-00411 (Patent 9,420,011), IPR2020-00412 (Patent 9,456,040),
`IPR2020-00413 (Patent 10,193,935), IPR2020-00414 (Patent 9,705,937),
`IPR2020-00415 (Patent 9,705,937)
`
`FOR PETITIONER:
`
`Erika H. Arner
`Kevin D. Rodkey
`John M. Mulcahy
`FINNEGAN, HENDERSON, FARABOW, GARRETT, & DUNNER LLP
`erika.arner@finnegan.com
`kevin.rodkey@finnegan.com
`john.mulcahy@finnegan.com
`
`FOR PATENT OWNER:
`
`Andrew J. Wright
`Barry Bumgardner
`Joseph P. Oldaker
`Matthew C. Juren
`Joseph Oldaker
`NELSON BUMGARDNER ALBRITTON P.C.
`andrew@nbafirm.com
`barry@nelbum.com
`joseph@nbafirm.com
`matthew@nbafirm.com
`joseph@nelbum.com
`
`
`5
`
`
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