UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`Shenzhen Zhiyi Technology Co., Ltd.,
`Petitioner
`
`v.
`
`iRobot Corporation,
`Patent Owner.
`
`
`
`
`
`
`
`
`
`Case IPR2017-02061
`Patent 6,809,490
`
`
`JOINT MOTION TO TERMINATE PROCEEDING UNDER
`35 U.S.C. § 317(a) AND 37 C.F.R. § 42.72 AND JOINT
`REQUEST THAT THE SUBMITTED SETTLEMENT
`AGREEMENT BE KEPT SEPARATE AS
`BUSINESS CONFIDENTIAL INFORMATION
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`Shenzhen Zhiyi Technology Co., Ltd.,
`Petitioner
`
`v.
`
`iRobot Corporation,
`Patent Owner.
`
`
`
`
`
`
`
`
`
`Case IPR2017-02061
`Patent 6,809,490
`
`
`JOINT MOTION TO TERMINATE PROCEEDING UNDER
`35 U.S.C. § 317(a) AND 37 C.F.R. § 42.72 AND JOINT
`REQUEST THAT THE SUBMITTED SETTLEMENT
`AGREEMENT BE KEPT SEPARATE AS
`BUSINESS CONFIDENTIAL INFORMATION
`
`
`
`
`
`
`
`I.
`
`IPR2017-02061
`Joint Motion to Terminate Proceeding
`JOINT REQUEST FOR TERMINATION OF THE REVIEW
`Pursuant to 35 C.F.R. § 317(a) and 37 C.F.R. § 42.72, the Patent Owner,
`
`iRobot Corp. (“iRobot”) and Petitioner, Shenzhen Zhiyi Technology Co., Ltd., d/b/a
`
`iLife (“iLife”) (collectively “Parties”), hereby jointly move for an order terminating
`
`the inter partes review, subject to the terms of the Settlement Agreement entered
`
`into by the Parties.
`
`The Board authorized the filing of the instant motion in an email dated
`
`September 26, 2018. This motion is accompanied by a copy of the settlement
`
`agreement between the Parties.
`
`The IPR Proceeding relates to a petition for inter partes review filed on
`
`September 6, 2017, directed to U.S. Patent No. 6,809,490 (the “490 patent”).
`
`SETTLEMENT AGREEMENT
`
`
`
`The Parties have settled their dispute, and Pursuant to 35 C.F.R. § 317(a) and
`
`37 C.F.R. § 42.74(b), the Parties’ settlement agreement is in writing, and a true and
`
`correct copy is being filed concurrently herewith as Exhibit 1013.
`
`
`
`The Parties further certify that there are no collateral agreements or
`
`understandings made in connection with, or in contemplation of, the termination of
`
`the present inter partes review.
`
`1
`
`
`
`IPR2017-02061
`Joint Motion to Terminate Proceeding
`
`As stated in 35 C.F.R. § 317(a), because Petitioners and Patent Owner jointly
`
`
`
`
`request this termination, no estoppel under 35 C.F.R. § 315(3) shall attach to
`
`Petitioners.
`
`1. Reasons Why Termination is Appropriate
`
`Termination is proper under 35 C.F.R. § 317(a) because the Parties are jointly
`
`requesting termination, and the Office has not yet “decided the merits of the
`
`proceeding before the request for termination is filed.” Indeed, in this IPR
`
`Proceeding, no decision on the merits has been made.
`
`Moreover, as noted in the Patent Office Trial Practice Guidelines, “there are
`
`strong public policy reasons to favor settlement between the parties to a
`
`proceeding…The Board expects that a proceeding will terminate after the filing of a
`
`settlement agreement, unless the Board has already decided the merits of the
`
`proceeding. 35 C.F.R. § 317(a), as amended, and 35 C.F.R. § 327.”1
`
`2.
`
`Status of Related District Court Litigation
`
`The ’490 patent is the subject of the following pending litigations: Certain
`
`Robotic Vacuum Cleaning Devices and Components Thereof Such as Spare Parts,
`
`Inv. No. 337-TA-1057 (Int’l Trade Comm’n), filed April 18, 2017 (the “ITC
`
`Action”) and iRobot Corp. v. Shenzhen Zhiyi Technology Co., Ltd., d/b/a iLife, Case
`
`
`1 See Federal Register Vol. 77, No. 157 at 48768.
`
`2
`
`
`
`
`No. 1:17-cv-10652 (D. Mass) (the “iRobot District Court Action”). The ITC Action
`
`IPR2017-02061
`Joint Motion to Terminate Proceeding
`
`is pending a Final Determination from the International Trade Commission. The
`
`iRobot District Court Action was stayed prior to iLife being required to file an
`
`answer or otherwise respond to the complaint. The Parties notified the ITC and
`
`district court that the parties had reached an agreement to resolve the dispute.
`
`Consistent therewith, pursuant to the Parties’ Settlement Agreement, the Parties shall
`
`file with the ITC and district court, respectively, stipulated motions requesting
`
`termination of the ITC Action and dismissing without prejudice all claims and
`
`counterclaims pending between iRobot and iLife in the iRobot District Court Action.
`
`II.
`
`JOINT REQUEST THAT THE SUBMITTED SETTLEMENT
`AGREEMENT BE KEPT SEPARATE AND TREATED AS BUSINESS
`CONFIDENTIAL INFORMATION
`Under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), Petitioner and Patent
`
`Owner also concurrently request that the Settlement Agreement “be treated as
`
`business confidential information, [] be kept separate from the file of the involved
`
`patents, and [] be made available only to Federal Government agencies on written
`
`request, or to any person on a showing of good cause.” 35 U.S.C. § 317(b). In view
`
`of this request, the Settlement Agreement (Exhibit 1013) has been filed for access
`
`by the “Parties and Board Only.”
`
`3
`
`
`
`IPR2017-02061
`Joint Motion to Terminate Proceeding
`
`III. CONCLUSION
`For the foregoing reasons, Petitioner and Patent Owner jointly request that
`
`this motion be granted pursuant to 35 U.S.C. § 317 and 37 C.F.R. §§ 42.72, 42.74.
`
`This paper is being filed by Petitioner with the approval of counsel for
`
`Patent Owner iRobot Corporation.
`
`Date: September 27, 2018
`
`Respectfully submitted,
`GREENBERG TRAURIG, LLP
`
`By:
`/s/ Jonathan D. Ball, Ph.D.
`Jonathan D. Ball, Ph.D.
`Registration No. 59,928
`ballj@gtlaw.com
`Greenberg Traurig LLP
`Met Life Building 200 Park Avenue
`New York, NY
`Phone: (212) 801-2223
`
`Counsel for Petitioner
`
`4
`
`
`
`IPR2017-02061
`Joint Motion to Terminate Proceeding
`
`CERTIFICATE OF SERVICE
`The undersigned certifies that a true and correct copy of Joint Motion to
`
`Terminate Proceeding, including any exhibits, has been served on the Patent Owner
`
`via email to Patent Owner by serving the email correspondence addresses of record
`
`as follows:
`
`W. Karl Renner
`IPR44360-0004IP1@fr.com
`Roberto J. Devoto
`PTABInbound@fr.com
`Patrick J. Bisenius
`PTABInbound@fr.com
`Tonya S. Drake
`tdrake@irobot.com
`
`Date: September 27, 2018
`
`Respectfully submitted,
`GREENBERG TRAURIG, LLP
`
`By:
`/s/ Jonathan D. Ball, Ph.D.
`Jonathan D. Ball, Ph.D.
`Registration No. 59,928
`ballj@gtlaw.com
`Greenberg Traurig LLP
`Met Life Building 200 Park Avenue
`New York, NY
`Phone: (212) 801-2223
`
`Counsel for Petitioner
`
`5
`
`
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