`571-272-7822
`
`
`Paper No. 21
`
`Entered: March 14, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BOYDSTUN EQUIPMENT MANUFACTURING, LLC,
`Petitioner,
`
`v.
`
`COTTRELL, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00962
`Patent 7,585,140 B1
`____________
`
`
`
`
`
`
`
`Before TIMOTHY J. GOODSON, JAMES A. WORTH, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`
`MAYBERRY, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Joint Motion to Terminate
`35 U.S.C. § 317(a); 37 C.F.R. § 42.72
`Granting Joint Requests to Treat Settlement Agreement
`as Business Confidential Information
`35 U.S.C. § 317(b); 37 C.F.R. § 42.74(c)
`
`
`
`
`
`
`IPR2017-00962
`Patent 7,585,140 B1
`
`Pursuant to our authorization, the parties, Petitioner Boydstun
`
`Equipment Manufacturing, LLC (“Boydstun”) and Patent Owner Cottrell,
`
`Inc. (“Cottrell”), filed a Joint Motion to Terminate Inter Partes Review
`
`(Paper 18, “Joint Motion to Terminate”), seeking to terminate IPR2017-
`
`00962. This proceeding involves U.S. Patent No. 7,585,140 B1 (the “’140
`
`patent”). We instituted trial in this proceeding on August 30, 2017 (Paper 8)
`
`and have not yet issued a Final Written Decision on the merits.
`
`Pursuant to 37 C.F.R. § 42.74(b), the parties also filed an unexecuted
`
`copy of “[a] settlement agreement between Boydstun and Cottrell,” as
`
`Exhibit 2007. See Paper 18, 1. To ensure that we had “a true copy” of the
`
`agreement between the parties as required by 37 C.F.R. § 42.74(b), we
`
`requested that the parties file an executed copy of their agreement, which
`
`was filed as Exhibit 2008. The parties also filed requests that Exhibits 2007
`
`and 2008 be treated as business confidential information pursuant to
`
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) and kept separate from the file
`
`of the ’140 patent. Paper 19; Paper 20 (addressing Exhibits 2007 and 2008,
`
`respectively). These requests state that “[t]here is good cause to treat the
`
`settlement [agreement] as Business Confidential Information because it
`
`contains competitively sensitive business information including the terms of
`
`settlement, the disclosure of which would harm the businesses of Boydstun
`
`and Cottrell.” Paper 19, 1; Paper 20, 1.
`
`In the Joint Motion to Terminate, “[t]he parties certify that there are
`
`no other collateral agreements or understandings made in connection with,
`
`or in contemplation of,” terminating this inter partes review proceeding.
`
`Paper 18, 1. The parties indicate that they have already dismissed related
`
`
`
`2
`
`
`
`IPR2017-00962
`Patent 7,585,140 B1
`
`district court litigation involving the ’140 patent. Id. The parties also
`
`indicate that “there is no litigation or proceeding involving the ’140 patent
`
`contemplated in the foreseeable future.” Id.
`
`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 patent owner, unless the Office has decided the
`
`merits of the proceeding before the request for termination is filed.” The
`
`parties indicate that terminating these proceedings “is appropriate because
`
`the parties have settled all of the judicial and administrative matters
`
`concerning the ’140 patent.” Paper 18, 1.
`
`In view of the circumstances presented in this case, we agree that
`
`terminating this proceeding is proper at this time. Indeed, there are strong
`
`public policy reasons to favor settlement between the parties to a
`
`proceeding. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`
`48,768 (Aug. 14, 2012); see also Paper 25, 1 (quoting the Trial Practice
`
`Guide). When, as here, we have not decided the merits, we generally expect
`
`that the proceeding will terminate after the filing of a settlement agreement.
`
`See id.
`
`Based on the preceding, we determine that it is appropriate to
`
`terminate this inter partes review proceeding without rendering a Final
`
`Written Decision as to the patentability of the challenged claims of the ’140
`
`patent.
`
`Accordingly, it is:
`
`ORDERED that, as was timely requested by the parties, the settlement
`
`agreements (Exs. 2007 and 2008) shall be treated as business confidential
`
`
`
`3
`
`
`
`IPR2017-00962
`Patent 7,585,140 B1
`
`information and kept separate from the file of U.S. Patent No. 7,585,140 B1,
`
`under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c); and
`
`FURTHER ORDERED that the Joint Motion to Terminate this
`
`proceeding is granted, and this proceeding is hereby terminated.
`
`
`
`
`
`4
`
`
`
`IPR2017-00962
`Patent 7,585,140 B1
`
`For PETITIONER:
`
`Stephen J. Joncus
`JONCUS LAW LLC
`steve@joncus.net
`
`David Madden
`MERSENNE LAW
`ptab@mersenne.com
`
`For PATENT OWNER:
`
`Daniel A. Crowe
`George Brell
`BRYAN CAVE LLP
`dacrowe@bryancave.com
`George.Brell@bryancave.com
`
`Ryan McBrayer
`Amy E. Simpson
`Kyle M. Amborn
`PERKINS COIE LLP
`rmcbrayer@perkinscoie.com
`asimpson@perkinscoie.com
`kamborn@perkinscoie.com
`
`
`
`5
`
`
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