`Trials@uspto.gov
`571-272-7822
`
`Date Entered: March 29, 2018
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AQ TEXTILES, LLC,
`Petitioner,
`
`v.
`
`ARUN AGARWAL,
`Patent Owner.
`____________
`
`Cases
`PGR2017-00041 (Patent 9,481,950 B2)
`PGR2017-00042 (Patent 9,493,892 B1)
`PGR2018-00018 (Patent 9,708,737 B2)
`____________
`
`Before BART A. GERSTENBLITH, CARL M. DEFRANCO, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`CHERRY, Administrative Patent Judge.
`
`
`DECISION
`Termination of Trial, Dismissing the Petition, and Settlement
`35 U.S.C. § 327; 37 C.F.R. §§ 42.71(a), 42.72, 42.74
`
`
`
`
`
`
`
`
`
`PGR2017-00041 (Patent 9,481,950 B2)
`PGR2017-00042 (Patent 9,493,892 B1)
`PGR2018-00018 (Patent 9,708,737 B2)
`
`By an email dated March 22, 2018, we authorized Patent Owner Arun
`Agarwal and Petitioner AQ Textiles, LLC (collectively, “the Parties”) to file
`joint motions to terminate these proceedings accompanied by true copies of
`all their agreements in contemplation of termination and a joint request to
`treat the filed copies of those agreements as business confidential
`information under 37 C.F.R. § 42.74(c).
`On March 23, 2018, the Parties filed a Joint Motion to Terminate
`Proceedings Pursuant to 35 U.S.C. § 327 and to Seal Pursuant to 37 C.F.R.
`§ 42.74(c) (Paper 141), copies of a written Settlement Agreement
`(Exhibit 2003), a Strategic Alliance Agreement (Exhibit 2004), and a
`License Agreement (Exhibit 2005).
`The Parties indicate that they have settled their underlying dispute and
`have agreed to terminate these proceedings pursuant to the Settlement
`Agreement, Strategic Alliance Agreement, and License Agreement, true and
`correct copies of which were filed with the Parties’ Motion. Paper 14, 2.
`The Parties further indicate that there are no other proceedings concerning
`the subject patent. See Pet. 83; Paper 15, 1.
`Generally, 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). Although trial has
`been instituted in PGR2017-00041 and PGR2017-00042, we have not
`decided the merits of either proceeding. See 35 U.S.C. § 327(a) (“A post-
`
`
`1 Similar motions and exhibits were filed in all three proceedings. For
`simplicity, we cite only the papers filed in PGR2017-00042, unless
`otherwise noted.
`
`2
`
`
`
`
`PGR2017-00041 (Patent 9,481,950 B2)
`PGR2017-00042 (Patent 9,493,892 B1)
`PGR2018-00018 (Patent 9,708,737 B2)
`
`grant 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.”); 37 C.F.R. § 42.72 (“The Board may terminate a
`trial without rendering a final written decision, where appropriate . . . .”).
`We are persuaded that, under these circumstances, termination of these
`proceedings is appropriate. This paper does not constitute a final written
`decision pursuant to 35 U.S.C. § 328(a).
`As for PGR2018-00018, Patent Owner has yet to file a Preliminary
`Response and we have yet to institute trial. Thus, the proceeding is still in a
`preliminary stage. The parties indicate that they have “settled their dispute.”
`PGR2018-00018, Paper 6, 2. Accordingly, we determine that dismissal of
`the Petition in PGR2018-00018 is appropriate. See 37 C.F.R. § 42.71(a).
`Accordingly, it is
`ORDERED that the Parties’ Joint Motion to Terminate Proceedings
`Pursuant to 35 U.S.C. § 327 and to Seal Pursuant to 37 C.F.R. § 42.74(c)
`(PGR2017-00041, Paper 15; PGR2017-00042, Paper 14; PGR2018-00018,
`Paper 6) is granted;
`FURTHER ORDERED that the Settlement Agreement (Exhibit 2003
`in PGR2017-00041 and PGR2017-00042; Exhibit 2001 in PGR2018-
`00018), Strategic Alliance Agreement (Exhibit 2004 in PGR2017-00041 and
`PGR2017-00042; Exhibit 2002 in PGR2018-00018), and License
`Agreement (Exhibit 2005 in PGR2017-00041 and PGR2017-00042;
`Exhibit 2003 in PGR2018-00018) shall be kept separate from the file of the
`
`3
`
`
`
`
`PGR2017-00041 (Patent 9,481,950 B2)
`PGR2017-00042 (Patent 9,493,892 B1)
`PGR2018-00018 (Patent 9,708,737 B2)
`
`above-referenced respective patent, pursuant to 35 U.S.C. § 327(b) and 37
`C.F.R. § 42.74(c);
`FURTHER ORDERED that that the trials in PGR2017-00041 and
`PGR2017-00042 are terminated; and
`FURTHER ORDERED that the Petition in PGR2018-00018 is
`dismissed.
`
`4
`
`
`
`
`PGR2017-00041 (Patent 9,481,950 B2)
`PGR2017-00042 (Patent 9,493,892 B1)
`PGR2018-00018 (Patent 9,708,737 B2)
`
`
`For Petitioner:
`Jason L. Lester
`Jason T. Condrasky
`MACCORD MASON PLLC
`jlester@maccordmason.com
`jcondrasky@maccordmason.com
`
`For Patent Owner:
`Michelle W. Skinner
`EDWARDS MAXSON MAGO & MACAULAY, LLP
`mskinner@em3law.com
`
`
`
`
`
`
`
`5
`
`
`
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