Bedgear, LLC

Patent Trials and Appeals Board

Aug 11, 2021

IPR2017-00524 (P.T.A.B. Aug. 11, 2021)

Trials@uspto.gov Paper 40
571-272-7822 Date: August 9, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

FREDMAN BROS. FURNITURE COMPANY, INC.,
Petitioner,

v.

BEDGEAR, LLC,
Patent Owner.
_____________

IPR2017-00524
Patent 9,155,408 B2
___________

PER CURIAM.

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

IPR2017-00524
Patent 9,155,408 B2
2
I. INTRODUCTION
With the Board’s authorization, Petitioner Fredman Bros. Furniture
Company, Inc. and Patent Owner Bedgear, LLC (collectively, “Parties”)
filed a Joint Motion to Terminate this proceeding due to settlement.
Paper 39 (“Joint Motion”). In support of the motion, the Parties filed a copy
of a confidential settlement agreement (Ex. 2018 (“Settlement
Agreement”)), as well as a joint request to file the settlement agreement as
business confidential pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74(c)
(Paper 38 (“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. Section 317(b) requires that
any agreement between the parties, including collateral agreements, made in
connection with the termination of an inter partes review “shall be in writing
and a true copy of such agreement or understanding shall be filed in the
Office before the termination of the inter partes review as between the
parties.”
The Parties represent that they have made and signed an agreement
that resolves all underlying disputes between the parties, including this
proceeding. Joint Motion 1. Further, the Parties jointly certify that, aside
from the Settlement Agreement, “there are no other agreements or
understandings, oral or written, between the parties, including any collateral
IPR2017-00524
Patent 9,155,408 B2
3
agreements or understandings, made in connection with, or in contemplation
of, the termination of the present proceeding,” and that the filed copy of the
Settlement Agreement is a true and correct copy. Id.
We instituted trial on July 17, 2017 and entered a final written
decision on July 13, 2018. Although we decided the merits of this
proceeding and entered a final written decision, the Federal Circuit vacated
that final written decision based on the Federal Circuit’s Arthrex decision.
Bedgear, LLC v. Fredman Bros. Furniture Co., 803 F. App’x 407 (2020)
(order vacating and remanding) (citing Arthrex, Inc. v. Smith & Nephew,
Inc., 941 F.3d 1320 (Fed. Cir. 2019)). Petitioner filed a petition for writ of
certiorari, which was dismissed upon a joint stipulation of dismissal on June
23, 2021. Fredman Bros. Furniture Co. v. Bedgear, LLC, No. 20-408, 2021
WL 2908899 (U.S. June 23, 2021).
Notwithstanding that this proceeding has moved beyond the
preliminary stages, the Parties have shown adequately that termination of the
proceeding is appropriate. Under these circumstances, we determine that
good cause exists to terminate the proceeding. We further determine that the
Settlement Agreement complies with the requirements for written
agreements regarding termination set forth in 35 U.S.C. § 317(b).
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. Joint Request.
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 cause exists to treat the Settlement Agreement between Petitioner and
IPR2017-00524
Patent 9,155,408 B2
4
Patent Owner 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 is granted, and this
proceeding is terminated pursuant to 35 U.S.C. § 317(a) and 37 C.F.R.
§ 42.72; and
FURTHER ORDERED that the Joint Request to File Settlement
Agreement as Business Confidential is granted, and the Settlement
Agreement shall be kept separate from the file of U.S. Patent No. 9,155,408
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).
IPR2017-00524
Patent 9,155,408 B2
5
FOR PETITIONER:
Jason R. Mudd
Eric A. Buresh
ERISE IP, P.A.
jason.mudd@eriseip.com
eric.buresh@eriseip.com

FOR PATENT OWNER:
Joseph J. Richetti
Frank M. Fabiani
Alexander Walden
BRYAN CAVE LLP
joerichetti@bryancave.com
frank.fabiani@bryancave.com
alexander.walden@bryancave.com