`Tel: 571-272-7822
`
`
`Paper No. 28
`Entered: October 11, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SHENZHEN ZHIYI TECHNOLOGY CO. LTD., D/B/A ILIFE,
`Petitioner,
`
`v.
`
`IROBOT CORP.,
`Patent Owner.
`____________
`
`Case IPR2017-02061
`Patent 6,809,490 B2
`____________
`
`
`
`Before WILLIAM V. SAINDON, TERRENCE W. MCMILLIN, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Granting Joint Motion to Terminate Proceeding Due to
`Settlement after Institution and
`Granting Joint Request to Treat Settlement Agreement as
`Business Confidential Information
`35 U.S.C. § 317; 37 C.F.R. §§ 42.72, 42.74
`
`
`
`
`
`
`
`
`IPR2017-02061
`Patent 6,809,490 B2
`
`INTRODUCTION
`I.
`Petitioner and Patent Owner (collectively referred to as “the Parties”) have
`requested that the above-identified inter partes review proceeding be terminated
`pursuant to a settlement, after the institution decision. On September 27, 2018, the
`Parties filed a Joint Motion to Terminate the above-identified proceeding (“Joint
`Motion”). Paper 27, 1–3. The Parties represent that the Board authorized filing
`the Joint Motion in an email dated September 26, 2018. Id. at 1. Along with the
`Joint Motion, the Parties filed a Confidential Settlement Agreement. Exhibit 1013
`(“Settlement Agreement”). The Parties also submitted 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) (“Joint Request”). Paper 27, 3.
`II. 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 termination is filed.” It is also provided in
`35 U.S.C. § 317(a) that if no petitioner remains in the inter partes review, the
`Office may terminate the review.
`In the Joint Motion, the Parties represent that they have reached an
`agreement to jointly seek termination of this inter partes review proceeding, and
`that the filed copy of the Settlement Agreement is a true and complete copy.
`Paper 27, 1. The Parties further represent that their settlement agreement resolves
`all currently pending Patent Office, International Trade Commission, and District
`Court proceedings between the Parties involving the ’490 patent, and that the
`Parties will “file with the ITC and district court, respectively, stipulated motions
`requesting termination of the ITC Action and dismissing without prejudice all
`
` 2
`
`
`
`
`
`
`
`IPR2017-02061
`Patent 6,809,490 B2
`claims and counterclaims pending between iRobot and iLife in the iRobot District
`Court Action.” Id at 1–3.
`We instituted a trial on the above-identified proceeding on March 12, 2018.
`Paper 8. 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
`beyond the preliminary stage, the Parties have shown adequately that termination
`of the proceeding is appropriate. Under these circumstances, we determine that
`good cause exists to terminate the proceeding with respect to the Parties.
`The Parties also filed a Joint Request that the Settlement Agreement be
`treated as business confidential information and kept separate from the file of the
`patent involved in this inter partes proceeding. Paper 27, 3. After reviewing the
`Settlement Agreement between Petitioner and Patent Owner, we find that the
`Settlement Agreement contains confidential business information regarding the
`terms of settlement. We determine that good cause exists to treat the Settlement
`Agreement between Petitioner and Patent Owner as business confidential
`information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`This Order does not constitute a final written decision pursuant to 35 U.S.C.
`§ 318(a).
`
`
`III. ORDER
`Accordingly, for the reasons discussed above, it is:
`ORDERED that the Joint Motion to Terminate is granted, and IPR2017-
`02061 is terminated due to settlement after institution decision with respect to
`Petitioner and Patent Owner pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72;
`and
`
`FURTHER ORDERED that the Joint Request to treat the Settlement
`
` 3
`
`
`
`
`
`
`
`
`
`IPR2017-02061
`Patent 6,809,490 B2
`Agreement as business confidential information is granted, and the Settlement
`Agreement shall be kept separate from the file of Patent 6,809,490 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).
`
`
`
`For PETITIONER:
`Jonathan Ball
`ballj@gtlaw.com
`
`Cameron Nelson
`nelsonc@gtlaw.com
`
`For PATENT OWNER:
`Walter Renner
`axf-ptab@fr.com
`
`Jeremy Monaldo
`jjm@fr.com
`
`Patrick Bisenius
`bisenius@fr.com
`
`Linhong Zhang
`lwzhang@fr.com
`
`Tonya Drake
`tdrake@irobot.com
`
`
`
` 4
`
`
`
`
`
`
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