`571-272-7822
`
`
`
`
`
`Paper 17
`Entered: October 13, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APEX TOOL GROUP, LLC,
`Petitioner,
`v.
`
`MILWAUKEE ELECTRIC TOOL CORPORATION,
`Patent Owner.
`____________
`
`PGR2020-00056
`Patent 10,422,617 B1
`____________
`
`Before GRACE KARAFFA OBERMANN, JOHN A. HUDALLA, and
`AARON W. MOORE, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`
`
`DECISION
`Settlement Prior to Institution of Trial
`37 C.F.R. § 42.74
`
`
`
`
`
`
`
`PGR2020-00056
`Patent 10,422,617 B1
`
`
`
`With Board preauthorization, Petitioner and Patent Owner filed a joint
`motion to terminate the proceeding (Paper 15) and a joint request (Paper 16)
`to file a copy of a Confidential Settlement Agreement (Exhibit 2013) as
`business confidential information. The parties represent that Exhibit 2013 is
`a “true and correct copy” of their resolution to terminate the proceeding.
`Paper 15, 1. The parties also “represent that there are no other agreements,
`oral or written . . . made in connection with, or in contemplation of, the
`termination of this proceeding.” Id. Termination is proper because the Board
`has yet to issue an institution decision and the proceeding is still at an early
`stage. Paper 15, 2 (citing Samsung Elecs. Co. v. Fundamental Innovation
`Sys. Int’l, Ltd., IPR2018-00605 (PTAB July 16, 2018) (Paper No. 10)).
`We next turn to the parties’ request to keep Exhibit 2013 separate
`from the file of the challenged patent and made available only to Federal
`Government agencies on written request, or to any person on a showing of
`good cause. Paper 16, 1. The parties ask us to treat Exhibit 2013 “as business
`confidential information” (id.), but make no attempt to show that
`Exhibit 2013, in fact, contains business confidential information. See
`generally, Paper 15, Paper 16. Nevertheless, based on our own review of
`Exhibit 2013, we find that the document contains express terms requiring the
`parties to maintain its confidentiality. Exhibit 2013, Article 9 (filed for
`viewing by parties and Board only). On this record, we find that good cause
`exists to treat Exhibit 2013 as business confidential information pursuant to
`37 C.F.R. § 42.74(c).
`
`
`
`
`
`
`2
`
`
`
`PGR2020-00056
`Patent 10,422,617 B1
`
`
`It is
`ORDERED that the parties’ joint motion to terminate the proceeding
`(Paper 15) is granted;
`FURTHER ORDERED that the parties’ joint request (Paper 16) to
`keep Exhibit 2013 separate from the file of U.S. Patent No. 10,422,617, and
`made available only to Federal Government agencies on written request, or
`to any person on a showing of good cause, pursuant to 37 C.F.R. § 42.74(c)
`is granted; and
`FURTHER ORDERED that this proceeding is terminated and the
`Petition is dismissed.
`
`
`PETITIONER:
`Bradley Micsky
`Nathan Louwagie
`CARLSON, CASPERS, VANDENBURGH & LINDQUIST, P.A.
`apex617pgr@carlsoncaspers.com
`bmicsky@carlsoncaspers.com
`nlouwagie@carlsoncaspers.com
`
`PATENT OWNER:
`Jason White
`Alexander Stein
`MORGAN LEWIS & BOCKIUS
`Jason.white@morganlewis.com
`Alexander.stein@morganlewis.com
`
`
`
`
`3
`
`
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