throbber
Trials@uspto.gov
`571.272.7822
`
`
`
` Paper No. 42
`
` Entered: March 11, 201919
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SZ DJI TECHNOLOGY CO., LTD. and PARROT INC.,
`Petitioners,
`
`v.
`
`DRONE-CONTROL, LLC,
`Patent Owner.1
`____________
`
`Case IPR2018-00204 (Patent 8,200,375 B2)
`Case IPR2018-00205 (Patent 8,380,368 B2)
`Case IPR2018-00206 (Patent 8,649,918 B2)
`Case IPR2018-00207 (Patent 9,079,116 B2)
`Case IPR2018-00208 (Patent 9,568,913 B2)
`____________
`
`Before PATRICK R. SCANLON, FRANCES L. IPPOLITO, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`GOODSON, Administrative Patent Judge.
`
`
`ORDER
`Granting Joint Motion to Terminate as to Petitioner Parrot Inc.
`Due to Settlement after Institution Decision and
`Granting Joint Request that Settlement Agreement Be Treated
`as Business Confidential Information
`35 U.S.C. § 317 and 37 C.F.R. § 42.74
`
`
`1 This Order addresses issues pertaining to each of the above-captioned
`proceedings. The parties may use this style heading only if the paper
`includes a statement certifying that the identical paper is being filed in each
`case.
`
`
`
`

`

`IPR2018-00204 (Patent 8,200,375 B2)
`IPR2018-00205 (Patent 8,380,368 B2)
`IPR2018-00206 (Patent 8,649,918 B2)
`IPR2018-00207 (Patent 9,079,116 B2)
`IPR2018-00208 (Patent 9,568,913 B2)
`
`
`Petitioner Parrot Inc. (“Parrot”) and Patent Owner Drone-Control,
`LLC (“Patent Owner”) filed a Joint Motion to Terminate as to Parrot in each
`of the above-captioned inter partes review proceedings due to settlement.
`See Paper 39 (“Joint Motion”).2 The parties also filed a copy of a Settlement
`and Release Agreement (Ex. 1027 (“Settlement Agreement”)), along with a
`Joint Request that Settlement Agreement Be Treated as Business
`Confidential Information and Be Kept Separate (see Paper 40 (“Joint
`Request”)).
`Under 35 U.S.C. § 317(a), an inter partes review proceeding shall be
`terminated with respect to any petitioner upon the joint request of the
`petitioner and the patent owner, unless the Patent and Trademark Office has
`decided the merits of the proceeding before the request for termination is
`filed. These cases are at an advanced stage, with hearings already
`completed, but the Board has not yet finished deciding the merits of these
`proceedings.
`Under 35 U.S.C. § 317(b), any agreement or understanding between
`the petitioner and the patent owner, including any collateral agreements
`referred to in such agreement or understanding, made in connection with, or
`in contemplation of, the termination of the proceeding shall be in writing,
`and a true copy of such agreement or understanding shall be filed in the
`Office. In the Joint Motion, Parrot and Patent Owner represent that they
`“have reached a settlement that resolves all disputes between them with
`
`2 Unless indicated otherwise, citations in this Order refer to the papers and
`exhibits in Case IPR2018-00204. The other proceedings include similar or
`identical papers and exhibits.
`
`2
`
`

`

`IPR2018-00204 (Patent 8,200,375 B2)
`IPR2018-00205 (Patent 8,380,368 B2)
`IPR2018-00206 (Patent 8,649,918 B2)
`IPR2018-00207 (Patent 9,079,116 B2)
`IPR2018-00208 (Patent 9,568,913 B2)
`
`
`respect to this proceeding . . . [and] also resolves the currently pending
`litigation between Parrot and Patent Owner’s predecessor-in interest.” Joint
`Motion 2. Parrot and Patent Owner also represent that Exhibit 1027 is a true
`copy of their settlement agreement and that there are no other agreements
`between the parties. Id. at 3.
`Upon consideration of the Joint Motion, we determine that it is
`appropriate to terminate the above-captioned proceedings with respect to
`Parrot. SZ DJI Technology Co., Ltd. will remain as the petitioner in each
`proceeding.
`After reviewing the Settlement Agreement between Parrot and Patent
`Owner, we find that the Settlement Agreement contains confidential
`business information regarding the terms of settlement. We determine that it
`is appropriate to treat the Settlement Agreement between Parrot and Patent
`Owner as business confidential information pursuant to 37 C.F.R.
`§ 42.74(c).
`Accordingly, it is hereby:
`ORDERED that the Joint Motion to Terminate as to Parrot in
`IPR2018-00204, IPR2018-00205, IPR2018-00206, IPR2018-00207, and
`IPR2018-00208 is granted;
`FURTHER ORDERED that SZ DJI Technology Co., Ltd. will remain
`as the petitioner in IPR2018-00204, IPR2018-00205, IPR2018-00206,
`IPR2018-00207, and IPR2018-00208, and each of these proceedings will
`continue; and
`FURTHER ORDERED that the parties’ Joint Request that Exhibit
`1027 in each of these proceedings be treated as business confidential
`
`3
`
`

`

`IPR2018-00204 (Patent 8,200,375 B2)
`IPR2018-00205 (Patent 8,380,368 B2)
`IPR2018-00206 (Patent 8,649,918 B2)
`IPR2018-00207 (Patent 9,079,116 B2)
`IPR2018-00208 (Patent 9,568,913 B2)
`
`
`information and kept separate from the files of the involved patents is
`granted.
`
`
`
`PETITIONER:
`
`
`
`Stephen Kabakoff
`Joshua Goldberg
`Qingyu Yin
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER LLP
`stephen.kabakoff@finnegan.com
`joshua.goldberg@finnegan.com
`qingyu.yin@finnegan.com
`
`Matthew Traupman
`Jim Glass
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`matthewtraupman@quinnemanuel.com
`jimglass@quinnemanuel.com
`
`
`PATENT OWNER:
`
`Jeffrey Toler
`Aakash Parekh
`Craig Jepson
`TOLER LAW GROUP, PC
`jtoler@tlgiplaw.com
`aparekh@tlgiplaw.com
`cjepson@tlgiplaw.com
`
`4
`
`

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