`571-272-7822
`
`
`
`
`
`
`
`Paper 9
`Date: September 21, 2020
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMAZON.COM, INC.,
`Petitioner,
`
`v.
`
`HAMMOND DEVELOPMENT INTERNATIONAL, INC.,
`Patent Owner.
`____________
`
`IPR2020-01043 (Patent 9,716,732), IPR2020-01051 (Patent 9,456,040),
`IPR2020-01058 (Patent 9,420,011), IPR2020-01064 (Patent 10,193,935),
`IPR2020-01066 (Patent 9,705,937)1
`____________
`
`
`
`Before MICHELLE N. WORMMEESTER, AMBER L. HAGY, and
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`
`HAGY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Settlement Prior to Institution of Trial
`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.
`
`
`
`
`
`IPR2020-01043 (Patent 9,716,732), IPR2020-01051 (Patent 9,456,040),
`IPR2020-01058 (Patent 9,420,011), IPR2020-01064 (Patent 10,193,935),
`IPR2020-01066 (Patent 9,705,937)
`
`
`INTRODUCTION
`I.
`With the Board’s authorization, Petitioner and Patent Owner
`(collectively referred to as “the Parties”) filed a Joint Motion to Terminate in
`each of the above-identified proceedings due to settlement. Paper 8 (“Joint
`Motion”). 2 In support of each Joint Motion, the Parties filed a Joint
`Stipulation of Partial Dismissal (Ex. 1080, “Stipulation”) and a Confidential
`Covenant Not to Sue (Ex. 1081, “Covenant”). The Parties additionally filed
`a Joint Request to treat the Covenant as business confidential information
`pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) in each of the
`above-identified proceedings. Paper 6 (“Joint Request”).
`
`II. DISCUSSION
`In each Joint Motion, the Parties represent that they have reached an
`agreement to jointly seek termination of the above-identified inter partes
`review proceedings, as set forth in the filed copies of the Covenant and
`Stipulation. Joint Motion 2–3. The Parties further represent that the
`Stipulation and Covenant resolve all currently pending Patent Office and
`District Court proceedings between the Parties involving the above-
`referenced patents. Id.
`The above-identified proceedings are at an early stage, and we have
`not yet decided whether to institute trial in the proceedings. In view of the
`early stage of the proceedings and the settlement between the Parties, we
`determine that good cause exists to dismiss the petitions and terminate the
`
`
`2 All citations are to IPR2020-01043 with the understanding that the other
`proceedings include papers having substantially the same substantive
`content.
`
`2
`
`
`
`IPR2020-01043 (Patent 9,716,732), IPR2020-01051 (Patent 9,456,040),
`IPR2020-01058 (Patent 9,420,011), IPR2020-01064 (Patent 10,193,935),
`IPR2020-01066 (Patent 9,705,937)
`
`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 file of the
`respective patent involved in this inter partes proceeding. Joint Request 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 paper 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 Motion to Terminate in each of the above-
`identified proceedings is granted, and IPR2020-01043, IPR2020-01051,
`IPR2020-01058, IPR2020-01064, and IPR2020-01066 are terminated; 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).
`
`
`
`3
`
`
`
`IPR2020-01043 (Patent 9,716,732), IPR2020-01051 (Patent 9,456,040),
`IPR2020-01058 (Patent 9,420,011), IPR2020-01064 (Patent 10,193,935),
`IPR2020-01066 (Patent 9,705,937)
`
`FOR PETITIONER:
`Colin B. Heideman
`Joseph R. Re
`Jeremy A. Anapol
`Cheryl T. Burgess
`Christie R.W. Matthaei
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2cbh@knobbe.com
`2jrr@knobbe.com
`2jaa@knobbe.com
`2ctb@knobbe.com
`2crw@knobbe.com
`
`FOR PATENT OWNER:
`Andrew J. Wright
`Joseph P. Oldaker
`Matthew C. Juren
`NELSON BUMGARDNER ALBRITTON P.C.
`andrew@nbafirm.com
`joseph@nbafirm.com
`matthew@nbafirm.com
`
`4
`
`
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