UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SHENZHEN SHUFANG INNOVATION TECHNOLOGY CO., LTD.;
`NENZ ELECTRIC TECHNOLOGY (DONGGUAN) CO., LTD.;
`SHENZHEN XINDE TECHNOLOGY CO., LTD.;
`PERFORMANCE HEALTH SYSTEMS, LLC;
`YONGKANG AIJIU INDUSTRIAL & TRADE CO., LTD.;
`ZHEJIANG RED & BLACK TECHNOLOGY CO., LTD.
`Petitioner,
`
`v.
`
`HYPER ICE, INC.
`Patent Owner.
`
`US Patent No. 10,561,574
`Filing Date: October 17, 2019
`Issue Date: February 18, 2020
`Title: Battery-powered percussive massage device
`
`Post-Grant Review No.: PGR2020-00089
`
`Joint Motion to Terminate Post-Grant Review of
`U.S. Patent No. 10,561,574
`Under 37 C.F.R. § 42.72
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SHENZHEN SHUFANG INNOVATION TECHNOLOGY CO., LTD.;
`NENZ ELECTRIC TECHNOLOGY (DONGGUAN) CO., LTD.;
`SHENZHEN XINDE TECHNOLOGY CO., LTD.;
`PERFORMANCE HEALTH SYSTEMS, LLC;
`YONGKANG AIJIU INDUSTRIAL & TRADE CO., LTD.;
`ZHEJIANG RED & BLACK TECHNOLOGY CO., LTD.
`Petitioner,
`
`v.
`
`HYPER ICE, INC.
`Patent Owner.
`
`US Patent No. 10,561,574
`Filing Date: October 17, 2019
`Issue Date: February 18, 2020
`Title: Battery-powered percussive massage device
`
`Post-Grant Review No.: PGR2020-00089
`
`Joint Motion to Terminate Post-Grant Review of
`U.S. Patent No. 10,561,574
`Under 37 C.F.R. § 42.72
`
`
`
`Joint Motion to Terminate PGR2020-00089
`U.S. Patent No. 10,561,574
`
`Pursuant to 37 C.F.R. § 42.72, Petitioner, Shenzhen, et al., and Patent
`
`Owner, Hyper Ice, Inc., jointly request dismissal and termination for Post-Grant
`
`Review (“PGR”) of U.S. Patent No. 10,561,574 (“the ’574 patent”) in PGR2020-
`
`00089. Petitioner and Patent Owner have entered into a written confidential
`
`agreement that fully resolves this matter. The Parties are concurrently filing a copy
`
`of the agreement as Exhibit 1028 along with a request to treat it as confidential
`
`business information pursuant to 35 U.S.C. § 327(b) and 37 C.F.R. § 42.74. The
`
`undersigned represents that there are no other agreements, oral or written, between
`
`the Parties made in connection with, or in contemplation of, the termination of the
`
`present proceeding and that Exhibit 1028 represents a true and accurate copy of the
`
`confidential agreement between the Parties that resolves the present proceeding.
`
`On March 8, 2021, the Parties informed the Board of the resolution via e-mail, and
`
`they requested and received Board authorization to file a joint motion to terminate
`
`the Petition with respect to both Patent Owner and the Petitioner and a joint motion
`
`to keep the agreement confidential. On March 19, 2021, the Parties requested and
`
`received from the Board an extension to March 26, 2021, to file their motions.
`
`Accordingly, Petitioner and Patent Owner jointly request termination of the present
`
`proceeding.
`
`Public policy favors terminating the present Petition for PGR. Congress and
`
`federal courts have expressed a strong interest in encouraging settlement in
`
`1
`
`
`
`Joint Motion to Terminate PGR2020-00089
`U.S. Patent No. 10,561,574
`
`litigation. See, e.g., Delta Airlines, Inc. v. August, 450 U.S. 346, 352 (1981) (“The
`
`purpose of [Fed. R. Civ. P.] 68 is to encourage the settlement of litigation.”); Bergh
`
`v. Dept. of Transp., 794 F.2d 1575, 1577 (Fed. Cir. 1986) (“The law favors
`
`settlement of cases.”), cert. denied, 479 U.S. 950 (1986). The Federal Circuit
`
`places a particularly strong emphasis on settlement. See Cheyenne River Sioux
`
`Tribe v. U.S., 806 F.2d 1046, 1050 (Fed. Cir. 1986) (noting that the law favors
`
`settlement to reduce antagonism and hostility between parties). And, the Board’s
`
`Trial Practice Guide stresses that “[t]here are strong public policy reasons to favor
`
`settlement between the parties to a proceeding.” Office Patent Trial Practice Guide,
`
`77 Fed. Reg. 48756, 46768 (Aug. 14, 2012). Terminating this petition for PGR
`
`early promotes the Congressional goal of establishing a more efficient patent
`
`system by limiting unnecessary and counterproductive costs. See Changes to
`
`Implement Inter Partes Review Proceedings, Post-Grant Review Proceedings, and
`
`Transitional Program for Covered Business Method Patents, 77 Fed. Reg. 48680
`
`(Aug. 14, 2012). Permitting termination provides certainty and fosters an
`
`environment that promotes settlements, creating a timely, cost-effective alternative
`
`to litigation. Additionally, termination of this petition for PGR is appropriate as the
`
`Board has not yet “decided the merits of the proceeding.” See, e.g., Office Patent
`
`Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012).
`
`2
`
`
`
`Joint Motion to Terminate PGR2020-00089
`U.S. Patent No. 10,561,574
`
`Petitioner filed its petition for Post-Grant Review on September 30, 2020,
`
`and the Board issued a notice of filing date accorded on October 19, 2020. Patent
`
`Owner filed a Preliminary Response on January 19, 2021. No other substantive
`
`papers have been filed. The Parties have now resolved their dispute and reached
`
`agreement to terminate this proceeding. Additionally, there are no other pending
`
`USPTO proceedings regarding the ’574 patent. The USPTO can conserve its
`
`resources through terminating now, removing the need for the Board to further
`
`consider the arguments and to render an Institution Decision or Final Written
`
`Decision.
`
`3
`
`
`
`Joint Motion to Terminate PGR2020-00089
`U.S. Patent No. 10,561,574
`
`Therefore, the Parties respectfully request termination of this Post-Grant
`
`Review of U.S. Patent No. 10,561,574.
`
`Dated: March 25, 2021
`
`/Kevin Greenleaf/
`Kevin Greenleaf
`Reg. No. 64,062
`Scott W. Cummings
`Reg. No. 41,567
`Kerisha Bowen
`Reg. No. 71,420
`DENTONS US LLP
`Ph: (202) 496-7323
`Attorneys for Shenzhen et al.
`Counsel for Petitioners
`
`/Joshua D. Curry/
`Joshua D. Curry
`Reg. No. 65,478
`Josh.Curry@lewisbrisbois.com
`LEWIS BRISBOIS BISGAARD & SMITH LLP
`1180 Peachtree Street NE, Suite 2900
`Atlanta, GA 30309
`Telephone: 404-348-8585
`
`Brian G. Arnold
`Brian.Arnold@lewisbrisbois.com
`Jonathan Pink
`Jonathan.Pink@lewisbrisbois.com
`Lawrence R. LaPorte
`Reg. No. 38,948
`Lawrence.LaPorte@lewisbrisbois.com
`LEWIS BRISBOIS BISGAARD & SMITH LLP
`633 W. 5th Street, Suite 4000
`Los Angeles, CA 90071
`Telephone: 213-250-1800
`
`Rohini Roy
`Rohini.Roy@lewisbrisbois.com
`LEWIS BRISBOIS BISGAARD & SMITH LLP
`103 W. Vandalia St.
`Edwardsville, IL 62025
`Telephone: 618-307-7624
`
`Attorneys for Hyper Ice, Inc.
`Counsel for Patent Owner
`
`4
`
`
`
`Joint Motion to Terminate PGR2020-00089
`U.S. Patent No. 10,561,574
`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the Joint Motion to
`
`Terminate, along with Exhibit 1028, were served on the date below, via e-mail on
`
`the following correspondence address of record for the patent owner.
`
`Joshua D. Curry (Josh.Curry@lewisbrisbois.com)
`
`Brian G. Arnold (Brian.Arnold@lewisbrisbois.com)
`
`Johnathon Pink (Johnathan.Pink@lewisbrisbois.com)
`
`Lawrence R. LaPorte (Lawrence.LaPorte@lewisbrisbois.com)
`
`Rohini Roy (Rohini.Roy@lewisbrisbois.com)
`
`Dated: March 25, 2021
`
`/Kevin Greenleaf /
`Kevin Greenleaf
`Reg. No. 64,062
`Scott W. Cummings
`Reg. No. 41,567
`Kerisha Bowen
`Reg. No. 71,420
`DENTONS US LLP
`1900 K St. N.W.,
`Washington, D.C. 20006
`Ph: (202) 496-7323
`Fax: (202) 496- 7756
`scott.cummings@dentons.com
`Attorneys for Shenzhen et al.
`
`5
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
