`571-272-7822
`
`
`Paper 9
`Entered: February 9, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AMERICAN HONDA MOTOR CO., INC.,
`Petitioner,
`v.
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`
`IPR2022-01521
`Patent 9,681,466 B2
`
`
`
`
`
`
`
`
`
`Before KRISTEN L. DROESCH, DAVID C. MCKONE, and
`AMBER L. HAGY, Administrative Patent Judges.
`MCKONE, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`
`
`DECISION
`Settlement Prior to Institution of Trial
`37 C.F.R. § 42.74
`
`
`
`
`
`
`
`IPR2022-01521
`Patent 9,681,466 B2
`
`
`With our authorization, the parties filed a Joint Motion to Terminate
`Proceeding. Paper 7. The parties assert that they “have reached an
`agreement to resolve this inter partes review (IPR) proceeding.” Id. at 1.
`The parties represent that, as a result of the parties’ resolution of their
`dispute, they are also filing a motion to dismiss the co-pending lawsuit
`related to U.S. Patent No. 9,681,466 B2 (“the ’466 Patent”), which is the
`patent at issue in this proceeding. Id. at 3. The parties represent also that
`“[a] true copy of the document resolving the disputes related to the ’466
`Patent is filed concurrently herewith,” which was filed as Exhibit 2001.
`Id. at 4. We have reviewed that document and it indicates that the
`agreement is the entire agreement between the parties.
`In a separate paper, the parties also jointly request that the Board
`“treat the document resolving the proceeding (the ‘Resolution Document,’
`Exhibit 2001) . . . as business confidential information” and “that the
`confidential Resolution Document be kept separate from the file of the
`subject patent in the captioned proceeding and be made available only to
`Federal Government agencies on written request or to persons showing good
`cause.” Paper 8, 1.
`The Board has not yet entered a decision on institution of a trial, and
`we determine that good cause exists to dismiss the Petition (Paper 2) and to
`terminate the preliminary proceeding. See 37 C.F.R. § 42.74. After
`reviewing the parties’ settlement agreement, we find that the settlement
`agreement contains confidential business information regarding the terms of
`settlement, and we determine that good cause exists to treat the settlement
`agreement as business confidential information. See id.
`
`
`2
`
`
`
`IPR2022-01521
`Patent 9,681,466 B2
`
`
`It is
`ORDERED that the Joint Motion to Terminate Proceedings is
`granted;
`FURTHER ORDERED that the Petition (Paper 2) is dismissed and the
`preliminary proceeding is terminated; and
`FURTHER ORDERED that the filed settlement agreement (Ex. 2001)
`be treated as business confidential information pursuant to 37 C.F.R.
`§ 42.74(c) and also remain designated as available only to “Parties and
`Board” in the Board’s Patent Trial and Appeal Case Tracking System (P-
`TACTS).
`
`3
`
`
`
`IPR2022-01521
`Patent 9,681,466 B2
`
`FOR PETITIONER:
`
`Michael Dokhanchy
`KIRKLAND & ELLIS LLP
`reza.dokhanchy@kirkland.com
`
`
`FOR PATENT OWNER:
`
`
`
`
`
`
`
`Daniel Golub
`Ryan O'Donnell
`Jeffrey Glabicki
`Robert Leonard
`Dawn Kerner
`Michael Snyder
`VOLPE KOENIG
`dgolub@vklaw.com
`rodonnell@vklaw.com
`jglabicki@vklaw.com
`rleonard@vklaw.com
`dkerner@vklaw.com
`msnyder@vklaw.com
`
`
`Russell Rigby
`Intellectual Ventures
`rrigby@intven.co
`
`
`
`
`
`
`
`
`4
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`