72Lux, Inc. d/b/a Shoppable.com

Patent Trials and Appeals Board

Jun 9, 2020

IPR2020-00015 (P.T.A.B. Jun. 9, 2020)

Trials@uspto.gov Paper No. 15
571-272-7822 Entered: June 9, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

AMBER.IO, INC. D/B/A TWO TAP,
Petitioner,
v.
72LUX, INC. D/B/A SHOPPABLE,
Patent Owner.

IPR2020-00015
Patent 9,697,563 B2

Before GEORGE R. HOSKINS, MICHAEL L. WOODS, and
JASON W. MELVIN, Administrative Patent Judges.
MELVIN, Administrative Patent Judge.

TERMINATION
Due to Settlement After Institution of Trial
35 U.S.C. § 317; 37 C.F.R. § 42.74

IPR2020-00015
Patent 9,697,563 B2

2

I. INTRODUCTION
With the Board’s authorization, Petitioner and Patent Owner filed a
Joint Motion to Terminate the above-identified proceeding due to settlement.
Paper 14 (“Joint Motion”). In support of the Joint Motion, the parties filed a
Confidential Settlement and License Agreement (Ex. 2009 (“Settlement
Agreement”)), and a Joint Request to File the Settlement Agreement as
Business Confidential Information pursuant to 35 U.S.C. § 317(b) and
37 C.F.R. § 42.74(c) (Paper 13 (“Joint Request”)).
II. DISCUSSION
Under 35 U.S.C. § 317(a), “[a]n inter partes 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.”
Section 317(a) also provides that if no petitioner remains in the inter partes
review, the Office may terminate the review.
In the Joint Motion, the Parties represent that they have reached an
agreement to jointly seek termination of this inter partes review proceeding,
and that the filed copy of the Settlement Agreement is a true and complete
copy. Joint Motion 1. The Parties further represent that the Settlement
Agreement resolves all currently pending Patent Office and District Court
proceedings between the Parties involving Patent 9,697,563 B2. Id.
We instituted a trial on the above-identified proceeding on April 1,
2020. Paper 8. We have not yet decided the merits of the proceeding, and a
final written decision has not been entered. The Parties have shown
adequately that the termination of the proceeding is appropriate. Under these
circumstances, we determine that good cause exists to terminate the
IPR2020-00015
Patent 9,697,563 B2

3

proceeding.
The Parties also filed a Joint Request that the Settlement Agreement
be treated as business confidential information and be kept separate from the
file of the patent involved in this inter partes proceeding. Paper 13, 1. We
agree that the Settlement Agreement contains confidential business
information and that good cause exists to treat the Settlement Agreement as
business confidential information pursuant to 35 U.S.C. § 317(b) and
37 C.F.R. § 42.74(c).
This Order does not constitute a final written decision pursuant to
35 U.S.C. § 318(a).
III. ORDER
Accordingly, for the reasons discussed above, it is:
ORDERED that the Joint Motion to Terminate (Paper 14) is granted,
and IPR2020-00015 is terminated pursuant to 35 U.S.C. § 317(a) and
37 C.F.R. § 42.72; and
FURTHER ORDERED that the Joint Request (Paper 13) to File the
Settlement Agreement (Exhibit 2009) as Business Confidential Information
is granted, and the Settlement Agreement shall be kept separate from the file
of Patent 9,697,563 B2, and made available only to Federal Government
agencies on written request, or to any person on a showing of good cause,
pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).

IPR2020-00015
Patent 9,697,563 B2

4

PETITIONER:
Bob Steinberg
Bob.steinberg@lw.com

Lisa Nguyen
Lisa.nguyen@lw.com

PATENT OWNER:

Asheesh Puri
apuri@foxrothschild.com

Ryan Miller
rmiller@foxrothschild.com