`571.272.7822
`
`
` Paper No. 19
` Entered: May 26, 2021
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CIZION, LLC,
`d/b/a VULCAN INDUSTRIAL MANUFACTURING,
`Petitioner,
`
`v.
`
`KERR MACHINE CO.,
`Patent Owner.
`____________
`
`PGR2020-00065
`Patent 10,591,070 B2
`____________
`
`
`
`Before HYUN J. JUNG, JAMES J. MAYBERRY, and RYAN H. FLAX,
`Administrative Patent Judges.
`
`MAYBERRY, Administrative Patent Judge.
`
`
`
`
`TERMINATION
`Due to Settlement After Institution of Trial
`35 U.S.C. § 327; 37 C.F.R. § 42.74
`
`
`
`
`
`
`
`
`PGR2020-00065
`Patent 10,591,070 B2
`
`
`Pursuant to our authorization, the parties filed a Joint Motion to
`Terminate Proceeding (Paper 15) and a Joint Request to Keep Settlement
`Agreement Confidential and Separate Under 37 C.F.R. § 42.74(c) (Paper
`16), seeking to terminate PGR2020-00065. Pursuant to 37 C.F.R.
`§ 42.74(b), the parties also filed a true copy of their written agreement
`(Ex. 1075) in the proceeding. Ex. 1075 is entitled “Confidential Settlement
`Communication” and contemplates the parties executing “a more detailed
`settlement agreement.” Ex. 1075, 2. PGR2020-00065 concerns U.S. Patent
`No. 10,591,070 B2 (the “’070 patent”). Ex. 1001.
`In response to further instructions from the Board, the parties filed an
`Amended Joint Motion to Terminate Proceeding (Paper 17) and an
`Amended Joint Request to Keep Settlement Agreement Confidential and
`Separate Under 37 C.F.R. § 42.74(c) (Paper 18). With that filing, the parties
`filed a confidential, finalized Settlement Agreement (Ex. 1076).
`In the Amended Joint Motion to Terminate Proceeding, the parties
`indicate that they have reached a confidential settlement of their dispute with
`respect to the ’070 patent. Paper 17, 2. The parties further indicate this
`settlement includes the present proceeding and the underlying district court
`litigation. Id.
`Under 35 U.S.C. § 327(a), “a post-grant review instituted under this
`chapter shall be terminated with respect to any petitioner upon the joint
`request of the petitioner and patent owner, unless the Office has decided the
`merits of the proceeding before the request for termination is filed.” The
`parties indicate that the Board has not already decided the merits in the
`present proceeding, making termination appropriate under 37 C.F.R.
`§ 42.72. Paper 17, 3. The parties also indicate that the underlying district
`court litigation involving the ‘070 patent has already been dismissed. Id.
`
`2
`
`
`
`PGR2020-00065
`Patent 10,591,070 B2
`
`
`(citing Kerr Machine Co. v. Vulcan Industrial Holdings, LLC, C.A. No. 6-
`20-cv-00200, Dkt. 80 (W.D. Tex. May 10, 2021)).
`In view of the circumstances presented in this case, we agree that
`terminating this proceeding is proper at this time. Indeed, there are strong
`public policy reasons to favor settlement between the parties to a
`proceeding. See Consolidated Trial Practice Guide (“Consolidated Practice
`Guide”)1 at 86; see also 84 Fed. Reg. 64,280 (Nov. 21, 2019). When, as
`here, we have not rendered a Final Written Decision on the merits, we
`generally expect that the proceeding will terminate after the filing of a
`settlement agreement. See id.
`Based on the preceding, we determine that it is appropriate to
`terminate this proceeding without rendering a Final Written Decision as to
`the patentability of the challenged claims of the ’070 patent.
`The parties also “jointly request that the Board treat the [p]arties’
`confidential Settlement Agreements [Exhibits 1075 and 1076] as business
`confidential information, and keep that Agreements separate from the files
`of the involved patent (No. 10,591,070) and this [post-grant review]
`proceeding.” Paper 18, 2. The parties state that Exhibits 1075 and 1076
`represent “[a] true and correct copy of the Settlement Agreements between
`the [p]arties.” Id.
`Accordingly, it is:
`ORDERED that the parties’ request that the settlement agreements
`(Ex. 1075 and Ex. 1076) be treated as business confidential information and
`
`
`1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`3
`
`
`
`PGR2020-00065
`Patent 10,591,070 B2
`
`
`kept separate from the file of U.S. Patent No. 10,591,070 B2, under the
`provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is granted;
`FURTHER ORDERED that previously filed motion and request
`regarding Exhibit 1075 alone are moot and expunged (Papers 15, 16); and
`FURTHER ORDERED that the Amended Joint Motion to Terminate
`Proceeding is granted, and this proceeding is hereby terminated.
`
`
`
`4
`
`
`
`PGR2020-00065
`Patent 10,591,070 B2
`
`
`
`For PETITIONER:
`Brenton Babcock
`Barry Herman
`WOMBLE BOND DICKINSON (US) LLP
`Brent.Babcock@wbd-us.com
`Barry.Herman@wbd-us.com
`
`For PATENT OWNER:
`James Hall
`Stephen Zinda
`J. David Cabello
`CABELLO HALL ZINDA, PLLC
`james@chzfirm.com
`stephen@chzfirm.com
`david@chzfirm.com
`
`
`5
`
`
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