`7S
`571 272-7822
`
`Paper 27
`Entered: October 12, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`COOLIT SYSTEMS, INC.,
`Petitioner,
`
`V.
`
`ASETEK DANMARKA/S,
`Patent Owner.
`
`IPR2021-01196
`Patent 10,599,196 B2
`
`Before MICHAEL P. TIERNEY,Vice ChiefAdministrative Patent Judge,
`KEVIN W. CHERRY, and JASON W. MELVIN, Administrative Patent
`Judges.
`
`MELVIN, Administrative Patent Judge.
`
`TERMINATION
`Dueto Settlement After Institution of Trial
`35 U.S.C. § 317; CER. § 42.74
`
`
`
`IPR2021-01196
`Patent 10,599,196 B2
`
`I.
`
`INTRODUCTION
`
`With the Board’s authorization, Petitioner and Patent Owner
`
`(collectively referred to as “the Parties”) filed a Joint Motion to Terminate
`
`the above-identified proceeding due to settlement. Paper 24 (“Joint
`
`Motion’). In support of the Joint Motion, the Parties filed a Confidential
`
`Settlement Agreement (Ex. 2018 (“Settlement Agreement”’)), as well as a
`
`Joint Request to Treat the Settlement Agreement as Business Confidential
`
`Information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (Paper
`
`25 (“Joint Request’’)).
`
`Il.
`
`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 terminationis filed.”
`
`Section 35 U.S.C. § 317(a) also provides that if no petitioner remainsin the
`
`inter partes review, the Office may terminate the review.
`
`The Parties represent that they have reached an agreementto jointly
`
`seek termination of this inter partes review proceeding, andthat the filed
`
`copy of the Settlement Agreementis a true and complete copy. Paper 25, 2.
`
`The Parties further represent that their settlement agreement resolvesall
`
`currently pending Patent Office and District Court proceedings between the
`
`Parties involving Patent 10,599,196 B2. Paper 24, 1.
`
`Weinstituted a trial on the above-identified proceeding on
`
`December 28, 2021. Paper 10. We have not yet decided the merits of the
`
`proceeding, and a final written decision has not been entered.
`
`Notwithstanding that the proceeding has moved beyondthe preliminary
`
`
`
`IPR2021-01196
`Patent 10,599,196 B2
`
`stage, the Parties have shown adequately that the termination of the
`
`proceeding is appropriate. Under these circumstances, we determine that
`
`good cause exists to terminate the proceeding with respectto the Parties.
`
`The Parties also filed a Joint Request that the Settlement Agreement
`
`be treated as business confidential information and be kept separate from the
`
`file of the respective patents involved in this inter partes proceeding.
`
`Paper 25,2. After reviewing the Settlement Agreement between Petitioner
`
`and Patent Owner, wefind that the Settlement Agreement contains
`
`confidential business information regarding the termsof settlement. We
`
`determine that good cause exists to treat the Settlement Agreement between
`
`Petitioner and Patent Owneras business confidential information pursuant to
`
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`
`This Order doesnot constitute a final written decision pursuantto
`
`35 U.S.C. § 318(a).
`
`IN.
`
`ORDER
`
`Accordingly, for the reasons discussed above,it1s:
`
`ORDEREDthatthe Joint Motion to Terminate (Paper 24) is granted,
`
`and IPR2021-01196 is terminated with respect to Petitioner and Patent
`
`Ownerpursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72; and
`
`FURTHER ORDEREDthat the Joint Request (Paper 25) to Treat the
`
`Settlement Agreement (Exhibit 2018) as Business Confidential Information
`
`is granted, and the Settlement Agreement shall be kept separate from thefile
`
`of Patent 10,599,196 B2, 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).
`
`
`
`IPR2021-01196
`Patent 10,599,196 B2
`
`For PETITIONER:
`
`James L. Ryerson
`Heath J. Briggs
`GREENBERG TRAURIG, LLP
`ryersonj@gtlaw.com
`briggsh@gtlaw.com
`
`For PATENT OWNER:
`
`Eric P. Raciti
`Arpita Bhattacharyya
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER LLP
`eric.raciti@finnegan.com
`arpita.bhattacharyya@finnegan.com
`
`
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