Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 19
`Entered: April 10, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`SIEMENS GAMESA RENEWABLE ENERGY INC.,
`Petitioner,
`v.
`GENERAL ELECTRIC COMPANY,
`Patent Owner.
`_______________
`
`IPR2022-01279
`Patent 7,629,705 B2
`_______________
`
`
`Before BARBARA A. PARVIS, JEFFREY W. ABRAHAM, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`HOWARD, Administrative Patent Judge.
`
`
`
`DECISION
`Settlement Prior to Institution of Trial
`37 C.F.R. § 42.74
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`Paper 19
`Entered: April 10, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`SIEMENS GAMESA RENEWABLE ENERGY INC.,
`Petitioner,
`v.
`GENERAL ELECTRIC COMPANY,
`Patent Owner.
`_______________
`
`IPR2022-01279
`Patent 7,629,705 B2
`_______________
`
`
`Before BARBARA A. PARVIS, JEFFREY W. ABRAHAM, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`HOWARD, Administrative Patent Judge.
`
`
`
`DECISION
`Settlement Prior to Institution of Trial
`37 C.F.R. § 42.74
`
`
`
`
`
`
`
`
`
`IPR2022-01279
`Patent 7,629,705 B2
`
`Petitioner (Siemens Gamesa Renewable Energy Inc.) and Patent
`
`Owner (General Electric Company) have indicated that they have reached an
`agreement to settle the above-identified inter partes review proceeding. The
`Board authorized the parties to file a joint motion to terminate the
`proceeding on March 14, 2023.
`On April 4, 2023, pursuant to 37 C.F.R. § 42.74 and
`35 U.S.C. § 317(a), the parties filed a Joint Motion to Terminate the above-
`identified proceeding (Paper 17 (“Joint Motion”)) and a Joint Request to
`Treat a Settlement Agreement as business confidential information and to
`keep said Settlement Agreement separate from the public file (Paper 18
`(“Joint Request”)), along with a copy of the confidential Settlement
`Agreement (Ex. 2010 (“Agreement”)). The parties represent that they have
`submitted “true and correct copies” of the parties’ settlement agreement and
`any collateral agreements made in contemplation of termination of all
`proceedings involving US 7,629,705 B2. Paper 17, 1–2. In particular, the
`parties submit they “have resolved the disputes in this proceeding, and
`Patent Owner will file a notice of voluntary dismissal with prejudice of its
`amended complaint in the district court litigation related to the ’705 Patent.”
`Id. at 2. The parties further represent that “[n]o other such agreements,
`written or oral, exist between the parties.” Id. at 1.
`The above-identified proceeding is at an early stage, and we have not
`yet decided whether to institute a trial in this proceeding. There are strong
`public policy reasons to favor settlement between the parties to a
`proceeding. Consolidated Trial Practice Guide, 84 Fed. Reg. 64,280 (Nov.
`21, 2019). In view of the early stage of the proceeding and the parties’
`settlement and representations, we determine that good cause exists to
`
` 2
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`
`
`
`
`IPR2022-01279
`Patent 7,629,705 B2
`
`terminate this proceeding and dismiss its petition without rendering a
`decision on institution. Accordingly, we grant the Joint Motion.
`The parties also request that “the written settlement agreement filed as
`Ex. 2010 be treated as business confidential information and be kept
`separate from the files of U.S. Patent No. 7,629,705.” Paper 18, 1; see also
`Paper 17, 1. The parties additionally “request that the settlement agreement
`be made available only to (i) Federal Government agencies on written
`request or (ii) to any person only on showing of good cause, pursuant to 35
`U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).” Paper 18, 1. We have reviewed
`the Agreement, which contains confidential business information regarding
`the terms of settlement, and we determine that good cause exists to treat the
`Agreement as business confidential information and to keep it separate from
`the file of the patent in the above-identified proceeding pursuant to 35
`U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Accordingly, we grant this aspect
`of the parties’ Joint Request.
`The parties also request that
`In the event that a third party submits a written request to the
`Board for a copy of the settlement agreement along with a
`purported showing of good cause, due to the highly sensitive
`nature of the agreement, the Parties would like to be notified of
`such request and be given the opportunity to respond thereto.
`
`Paper 18, 1. However, neither the statute nor the regulation provides for any
`such notification or opportunity to respond, and the parties have not
`provided any special circumstance that would justify issuing an order that
`purports to impose additional requirements. Accordingly, we deny this
`portion of the parties’ Joint Request.
`This is not a final written decision pursuant to 35 U.S.C. § 318(a).
`
` 3
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`
`
`
`
`IPR2022-01279
`Patent 7,629,705 B2
`
`
`
`It is:
`ORDERED that the Joint Motion to Terminate (Paper 17) is granted,
`the Petition is dismissed, and IPR2022-01279 is terminated;
`FURTHER ORDERED that the Joint Request (Paper 18) is granted-
`in-part, and the Agreement (Ex. 2010) shall be treated as business
`confidential information, kept separate from the file of the involved U.S.
`Patent 7,629,705 B2, and made available only to Federal Government
`agencies on written request, or to any person on a showing of good cause on
`written request, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c);
`and
`
`FURTHER ORDERED that the filed Agreement (Exhibit 2010) shall
`remain designated as “Parties and Board Only” in the Board’s filing system.
`
`
`
` 4
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`
`
`IPR2022-01279
`Patent 7,629,705 B2
`
`For PETITIONER:
`
`Robert Hails
`T Cy Walker
`Theresa Weisenberger
`BAKER HOSTETLER LLP
`rhails@bakerlaw.com
`cwalker@bakerlaw.com
`tweisenberger@bakerlaw.com
`
`
`For PATENT OWNER:
`
`Monica Grewal
`Scott Bertulli
`Trishan Esram
`WILMER CUTLER PICKERING HALE AND DORR, LLP
`monica.grewal@wilmerhale.com
`scott.bertulli@wilmerhale.com
`trishan.esram@wilmerhale.com
`
` 5
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