`571-272-7822
`
`Paper 15
`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.
`
`Case IPR2015-01000
`Patent 7,035,914 Bl
`
`Before HOWARD B. BLANKENSHIP, MICHAELR. ZECHER,and
`JUSTIN T. ARBES,Administrative Patent Judges.
`
`ZECHER,Administrative Patent Judge.
`
`DECISION
`Termination of the Proceeding
`37 CE-R. $$ 42.72, 42.74
`
`
`
`IPR2015-01000
`Patent 7,035,914 Bl
`
`I. DISCUSSION
`On July 18, 2015, the parties filed a Joint Motion to Terminatethis
`proceeding (Paper 10), a binding term sheet that memorializes the parties’
`
`settlement agreement (Ex. 2003), and a request (Paper 11) to treat this
`
`settlement 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 informedthe 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 35 U.S.C. § 317(b) (“[a]ny agreementor
`
`understanding betweenthe patent owneranda 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 terminationoftheinter .
`partes review as between the parties”). We instructed the partiesto file the
`
`long form settlement agreementonceit has been executed, and, if they so
`
`choose,a requestto treat this settlement agreement as business confidential
`
`information. On August 21, 2015, the parties complied with ourinstructions
`by filing a Renewed Joint Motion to Terminate (Paper 12), a true copy ofthe
`long form settlement agreement (Ex. 2004), and a request (Paper 13) to treat
`the long formsettlement agreement as business confidential information
`under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`
`This proceedingisstill in its preliminary stages. Although Patent
`
`Owner, SimpleAir, Inc. (“SimpleAir”), timely filed a Preliminary Response
`
`(Paper 9), we have not yet entered a decision whetheror not to institute an
`
`inter partes review. In the Renewed Joint Motion to Terminate this
`
`
`
`IPR2015-01000
`Patent 7,035,914 B1
`
`proceeding, the parties represent that the related district court case involving
`
`U.S. Patent No. 7,035,914 B1 (“the ?914 patent”) will be dismissed without
`prejudice upon execution ofthe long form settlement agreement. Paper 12,
`2-4. The parties also identified a numberof other proceedings involving the
`
`’914 patentor related patents that are pending, dismissed, or on appeal to the
`
`United States Court of Appeals for the Federal Circuit. Jd. at 3. Under these
`circumstances, we determine that it is appropriate to terminatethis
`
`proceeding 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 agreementifthis proceeding is terminated “‘to
`ensure that the confidential settlement agreementwill 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 showingof 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, wesee nosufficient
`
`basis to expunge the long form settlement agreement from the record, and
`
`order that the parties are not authorizedto file a Motion to Expunge.
`
`In consideration of the foregoing, it is hereby:
`
`_
`
`Il. ORDER
`
`ORDEREDthatthe requests to treat the binding term sheet (Ex. 2003)
`
`and the long form settlement agreement (Ex. 2004) as business. confidential
`
`
`
`IPR2015-01000
`Patent 7,035,914 B1
`information under 35 USC. § 317(b) and 37 C.F.R. § 42.74(c) are
`GRANTED;
`
`FURTHER ORDEREDthat the parties’ Renewed Joint Motion to
`
`Terminate this proceeding is GRANTED,andthis proceeding is hereby
`
`terminated; and
`
`FURTHER ORDEREDthat the parties are not authorized to file a
`
`Motion to Expunge the long form settlement agreement.
`
`
`
`IPR2015-01000
`Patent 7,035,914 Bl
`
`For PETITIONER:
`
`J. David Hadden
`Saina S. Shamilov
`David D. Schumann
`Fenwick & West LLP
`dhadden@fenwick.com
`sshamilov@fenwick.com
`dschumann@fenwick.com
`
`For PATENT OWNER:
`
`Charles F. Wieland III
`Robert G. Mukai
`Buchanan,Ingersoll & Rooney P.C.
`charles.wieland@bipc.com
`robert.mukai@pbipc.com
`
`
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