Trials@uspto.gov
`571.272.7822
`
`
`Paper 11
`Entered: April 1, 2021
`
`
`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; and YONGKANG AIJIU INDUSTRIAL &
`TRADE CO., LTD.,
`Petitioner,
`
`v.
`
`HYPER ICE, INC.
`Patent Owner.
`____________
`
`Case PGR2020-00089
`Patent 10,561,574 B1
`____________
`
`
`Before LINDA E. HORNER, KALYAN K. DESHPANDE, and JAMES A.
`WORTH, Administrative Patent Judges.
`
`WORTH, Administrative Patent Judge.
`
`
`
`
`TERMINATION
`Due to Settlement Before Institution of Trial
`Granting Joint Motion to Treat Settlement Agreement
`Documents as Confidential Information
`35 U.S.C. § 327(a); 37 C.F.R. § 42.72; 37 C.F.R. § 42.74(c)
`
`
`
`
`

`

`PGR2020-00089
`Patent 10,561,574 B1
`
`
`
`On September 30, 2020, Shenzhen Shufang Innovation Technology
`Co., Ltd., Nenz Electric Technology (Dongguan) Co., Ltd., Shenzhen Xinde
`Technology Co., Ltd., Performance Health Systems, LLC, and Yongkang
`Aijiu Industrial & Trade Co., Ltd. (collectively, “Petitioner”) filed a petition
`for post-grant review of U.S. Patent 10,561,574 B1 (“the ’574 patent,”
`Ex. 1001). Paper 2. On January 19, 2021, Hyper Ice, Inc. (“Patent Owner”)
`filed a preliminary response. Paper 6. The Board has not instituted trial in
`this proceeding, and no final decision has been rendered by the Board in this
`proceeding.
`The parties have now filed a “Joint Motion to Terminate Post-Grant
`Review of U.S. Patent No. 10,561,574 Under 37 C.F.R. § 42.72” (Paper 8,
`“Joint Motion to Terminate”) and a Joint Motion to Keep Confidential and
`Separate Under 35 U.S.C. § 327(b) and 37 C.F.R. § 42.74(c) (Paper 9, “Joint
`Motion to Keep Separate”).
`Section 327(b) of Title 35 U.S.C. provides:
`Any agreement or understanding between the patent owner and
`a petitioner, including any collateral agreements referred to in
`such agreement or understanding, made in connection with, or in
`contemplation of, the termination of a post-grant review under
`this section shall be in writing, and a true copy of such agreement
`or understanding shall be filed in the Office before the
`termination of the post-grant review as between the parties.
`
`Id.
`
`The Joint Motion to Terminate represents as follows:
` 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
`
`2
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`

`

`PGR2020-00089
`Patent 10,561,574 B1
`
`
`
`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.
`
`Joint Motion to Terminate, 1. We understand “Shenzhen, et al.” to refer to
`all of the Petitioner entities listed in the caption.1
`Exhibit 1028 appears to include Settlement Agreements by the parties
`to a parallel ITC proceeding,2 including Shenzhen Shufang E-Commerce
`Co., Ltd. (Exhibit B), Performance Health Systems, LLC (Exhibit C), and
`Yongkang Aijiu Industrial & Trade Co., Ltd. (Exhibit A); and Shenzhen
`Xinde Technology Co., Ltd. (Exhibit E).
`Although Shenzhen Shufang Innovation Tech. Co., Ltd. and Nenz
`Electric Tech. (Dongguan) Co., Ltd. are not signatories to any of the exhibits
`to Ex. 1028, Patent Owner has confirmed by email (see Ex. 3001), in
`
`
`1 The Joint Motion to Terminate lists Zhejiang Red & Black Technology
`Co., Ltd. as one of the Petitioner entities and indicates that it has settled its
`dispute (see id.), although Zhejiang Red & Black Technology Co., Ltd. is
`not listed as one of the Petitioner entities on the Petition. Compare Paper 8,
`with Paper 2. We do not find this disparity a bar to resolution of this
`proceeding by settlement because the caption for the Joint Motion to
`Terminate includes all of the Petitioner entities on the Petition.
`2 The Settlement Agreements state: “The Parties agree that this Agreement is
`intended to be a full and final compromise, release, and settlement of any
`and all disputes of any existing claims against one another related to the ITC
`Investigation and the Accused Products.” Ex. 1028, Ex. A ¶ 6; Ex. B ¶ 8;
`Ex. C ¶ 5; Ex. D ¶ 8; Ex. E ¶ 7.
`
`3
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`

`PGR2020-00089
`Patent 10,561,574 B1
`
`
`response to an email inquiry from the Board, that Patent Owner does not
`oppose withdrawal of the Petition for post-grant review by these Petitioner
`entities. See Oxford Nanopore Techs., Inc. v. Pacific Biosciences of Calif.,
`Inc., IPR2018-01795, Paper 8 at 3 (PTAB Mar. 26, 2019) (“Based on
`e-mails to the Board seeking authorization to file this motion, we understand
`that the sole agreement among the parties is that Patent Owner does not
`oppose Petitioner’s request to withdraw its Petition.”)
`Based on the representation of the parties in the Joint Motion to
`Terminate, there are no other agreements between the parties, the parties
`understand Exhibit 1028 to have resolved their dispute, and the parties are
`seeking termination of the instant proceeding. Joint Motion to Terminate, 1.
`
`We determine that the Joint Motion to Terminate and Exhibit 1028,
`along with the email representation of Patent Owner, satisfy the
`requirements of 35 U.S.C. § 327(b). We determine that termination of the
`proceeding, as requested by the parties, is in the interest of the efficient
`administration of justice.
`Generally, the Board expects that a proceeding will terminate after the
`filing of a settlement agreement, unless the Board has already decided the
`merits of the proceeding. See 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 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, including
`. . . pursuant to a joint request under 35 U.S.C. 327(a)”). As noted above,
`
`4
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`

`PGR2020-00089
`Patent 10,561,574 B1
`
`
`the Board has not yet rendered a final decision here. Thus, we grant the
`Joint Motion to Terminate the proceedings.
`This Decision does not constitute a final written decision pursuant to
`35 U.S.C. § 328(a).
`The parties also move that the Settlement Agreements be treated as
`confidential information. Joint Motion to Keep Separate, 1. Based on our
`examination of Exhibit 1028, we determine that the Settlement Agreements
`contain confidential business information. The request to keep the
`agreements separate is granted.
`
`Accordingly, it is:
`ORDERED that the Joint Motion to Treat the Settlement Agreements
`(Ex. 1028) as confidential information is granted, and this agreement shall
`be kept separate from the public files of the ’574 patent, and made available
`only to Federal Government agencies on written request, or to any person on
`a showing of good cause, under 35 U.S.C. § 327(b) and 37 C.F.R.
`§ 42.74(c); and
`FURTHER ORDERED that the Joint Motion to Terminate this
`proceeding is granted, and this proceeding is hereby terminated under
`35 U.S.C. § 327(a) and 37 C.F.R. § 42.72.
`
`
`
`
`
`
`5
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`

`

`PGR2020-00089
`Patent 10,561,574 B1
`
`
`
`For PETITIONER:
`
`Kevin Greenleaf
`Scott W. Cummings
`Kerisha Bowen
`DENTONS US LLP
`kevin.greenleaf@dentons.com
`scott.cummings@dentons.com
`kerisha.bowen@dentons.com
`
`
`For PATENT OWNER:
`
`Joshua Curry
`Lawrence R. LaPorte
`LEWIS BRISBOIS BISGAARD & SMITH LLP
`josh.curry@lewisbrisbois.com
`lawrence.laporte@lewisbrisbois.com
`
`6
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`