`571-272-7822
`
`Paper 33
`Entered: July 30, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`INTIMIDATOR, INC. AND RF PRODUCTS, INC.,
`Petitioner,
`
`v.
`
`BAD BOY, INC.,
`Patent Owner.
`_______________
`
`Case IPR2018-01632
`Patent 9,730,386 B1
`_______________
`
`Before FRANCES L. IPPOLITO, KEVIN W. CHERRY, and
`PAUL J. KORNICZKY, Administrative Patent Judges.
`
`KORNICZKY, Administrative Patent Judge.
`
`DECISION and ORDER
`Granting Joint Motion to Terminate this Proceeding
`35 U.S.C. § 317; 37 C.F.R. §§ 42.72, 42.74
`
`
`
`IPR2018-01632
`Patent 9,730,386 B1
`
`On July 10, 2019, Petitioner (Intimidator, Inc. and RF Products, Inc.)
`and Patent Owner (Bad Boy, Inc.) (“Parties”) filed a Joint Motion to
`Terminate this proceeding and a Joint Motion to file settlement agreements
`as business confidential information (Paper 32, including both Motions),
`along with a copy of the written settlement agreements (Ex. 2014). The
`Board authorized the filing of the Motions on July 3, 2019.
`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.” 35
`U.S.C. § 317(a) states that if no petitioner remains in the inter partes review,
`the Office may terminate the review. Additionally, the Board expects that a
`proceeding will terminate after the filing of a settlement agreement. See,
`e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug.
`14, 2012).
`We instituted trial in this proceeding on March 13, 2019. Paper 21.
`Patent Owner’s Response was filed on June 13, 2019 (Paper 30), but
`Petitioner has not yet filed its Reply. We have not yet decided the merits of
`this proceeding, and a final written decision has not been entered in this
`proceeding. Notwithstanding that this proceeding has moved beyond the
`preliminary stage, the Parties have shown adequately that the termination of
`this proceeding is appropriate. Under these circumstances, we determine
`that good cause exists to terminate this proceeding with respect to the
`Parties.
`
`2
`
`
`
`IPR2018-01632
`Patent 9,730,386 B1
`
`The Parties must also comply with 37 C.F.R. § 42.74(b), which
`requires that “[a]ny agreement or understanding between the parties made in
`connection with, or in contemplation of, the termination of a proceeding
`shall be in writing and a true copy shall be filed with the Board before the
`termination of the trial.” The Parties represent that their “settlement
`agreements and any collateral agreements made in contemplation of
`termination of the proceeding are in writing, and true and correct copies of
`such documents are being filed herewith as Exhibit 2014.” Paper 32, 4. The
`Parties represent that, pursuant to the settlement agreements, they have
`agreed to terminate not only this proceeding but also the underlying district
`court litigations between them (Bad Boy, Inc. v. Intimidator, Inc. and RF
`Products, Inc., Case No. 1:17-cv-00070 (E.D. Ark.), and Bad Boy, Inc. v.
`Intimidator, Inc. and RF Products, Inc., Case No. 1:19-cv-17 (E.D. Ark.)).
`Id. The Parties confirm “the litigation between [them] . . . involving the
`’386 patent has been settled and a judgment dismissing the litigation has
`been entered by the District Court.” Id. at 6.
`Based on the facts of this proceeding, and in view of the Parties’ Joint
`Motion to Terminate, we are persuaded that it is appropriate to terminate this
`proceeding with respect to both Petitioner and Patent Owner without
`rendering any further decisions. See 37 C.F.R. §§ 42.5(a), 42.72. Therefore,
`the Joint Motion to Terminate and the Joint Motion to treat the settlement
`agreements as business confidential information are granted.
`This Order does not constitute a final written decision pursuant to
`35 U.S.C. § 318(a).
`Accordingly, it is
`ORDERED that the Joint Motion (Paper 32) to Terminate IPR2018-
`
`3
`
`
`
`IPR2018-01632
`Patent 9,730,386 B1
`
`01632 is granted;
`
`FURTHER ORDERED that the Joint Motion (Paper 32) to treat the
`settlement agreements (Ex. 2014) as business confidential information is
`granted; and
`FURTHER ORDERED that IPR2018-01632 is terminated with
`respect to both Petitioner and Patent Owner pursuant to 35 U.S.C. § 317(a)
`and 37 C.F.R. § 42.72.
`
`4
`
`
`
`IPR2018-01632
`Patent 9,730,386 B1
`
`For PETITIONER:
`
`Warner J. Delaune
`Lea H. Speed
`BAKER, DONELSON, BEARMAN,
`CALDWELL & BERKOWITZ, P.C.
`wdelaune@bakerdonelson.com
`lspeed@bakerdonelson.com
`
`For PATENT OWNER:
`
`Christopher L. Drymalla
`Chad Ennis
`Patrick Connolly
`BRACEWELL LLP
`chris.drymalla@bracewell.com
`chad.ennis@bracewell.com
`patrick.connolly@bracewell.com
`
`5
`
`
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