CF Traverse LLC

Patent Trials and Appeals Board

Dec 23, 2020

IPR2020-01586 (P.T.A.B. Dec. 23, 2020)

Trials@uspto.gov Paper 9
571-272-7822 Date: December 23, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

AMPRIUS, INC.,
Petitioner,

v.

CF TRAVERSE LLC,
Patent Owner.

IPR2020-01586
Patent 8,420,258 B2

Before CHRISTOPHER L. CRUMBLEY, JEFFREY W. ABRAHAM, and
ELIZABETH M. ROESEL, Administrative Patent Judges.

ABRAHAM, Administrative Patent Judge.

DECISION
Settlement Prior to Institution of Trial
37 C.F.R. § 42.74

IPR2020-01586
Patent 8,420,258 B2

2
I. INTRODUCTION
With the Board’s authorization, Petitioner and Patent Owner
(collectively “the Parties”) filed a Joint Motion to Dismiss this proceeding
due to settlement. Paper 7 (“Joint Motion”). In support of the Joint Motion,
the Parties filed a copy of a Non-Exclusive Confidential Patent License and
Settlement Agreement (Ex. 1036 (“Settlement Agreement”)), as well
as a Joint Motion to File Settlement Agreement as Business Confidential
Information pursuant to 37 C.F.R. § 42.74(c) (Paper 8 (“Joint Request”)).
II. DISCUSSION
In the Joint Motion, the Parties represent that they “have reached an
agreement regarding all disputes involving the ’258 patent.” Joint Motion 1.
The Parties further represent “that there are no other agreements, oral or
written, between the Parties made in connection with, or in contemplation
of, the dismissal of the proceeding.” Id. at 2.
This proceeding is at an early stage, and we have not yet decided
whether to institute a trial in the proceeding. In view of the early stage of
the proceeding and the settlement between the Parties, we determine that
good cause exists to dismiss the petition and terminate this proceeding with
respect to the Parties.
In the Joint Request, the Parties request that the Settlement Agreement
be treated as business confidential information and be kept separate from the
file of the patent involved in this proceeding. Joint Request 1. After
reviewing the Settlement Agreement between Petitioner and Patent Owner,
we find that the Settlement Agreement contains confidential business
information regarding the terms of settlement. We determine that good
IPR2020-01586
Patent 8,420,258 B2

3
cause exists to treat the Settlement Agreement between Petitioner and Patent
Owner as business confidential information pursuant to 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 Dismiss is granted, and the
petition in IPR2020-01586 is dismissed and this proceeding is terminated;
and
FURTHER ORDERED that the Joint Request is granted, and the
Settlement Agreement shall be kept separate from the file of
Patent 8,420,258 B2, and be made available only to Federal Government
agencies on written request, or to any person on a showing of good cause,
pursuant to 37 C.F.R. § 42.74(c).

IPR2020-01586
Patent 8,420,258 B2

4
FOR PETITIONER:

Matthew A. Argenti
Michael T. Rosato
Yahn-Lin Chu
Quincy A. Lu
WILSON SONSINI GOODRICH & ROSATI
margenti@wsgr.com
mrosato@wsgr.com
ychu@wsgr.com
qalu@wsgr.com

FOR PATENT OWNER:

Bryan J. Vogel
Derrick J. Carman
Cyrus A. Morton
Miles A. Finn
ROBINS KAPLAN LLP
BVogel@RobinsKaplan.com
DCarman@RobinsKaplan.com
CMorton@RobinsKaplan.com
MFinn@RobinsKaplan.com