Bedgear, LLC

Patent Trials and Appeals Board

Aug 11, 2021

IPR2017-00350 (P.T.A.B. Aug. 11, 2021)

Trials@uspto.gov Paper 46
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.
_____________

IPR2017-00350 (Patent 8,887,332 B2)
IPR2017-00351 (Patent 9,015,883 B2)
IPR2017-00352 (Patent 8,646,134 B1)
___________

PER CURIAM.

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

IPR2017-00350 (Patent 8,887,332 B2)
IPR2017-00351 (Patent 9,015,883 B2)
IPR2107-00352 (Patent 8,646,134 B1)
2
I. INTRODUCTION
With the Board’s authorization, Petitioner Fredman Bros. Furniture
Company, Inc. and Patent Owner Bedgear, LLC (collectively, “Parties”)
filed Joint Motions to Terminate these proceedings due to settlement.
IPR2017-00350, Paper 45 (“Joint Motion”); IPR2017-00351, Paper 45;
IPR2017-00352, Paper 46. In support of these motions, the Parties filed a
copy of a confidential settlement agreement (IPR2017-00350, Ex. 2022;
IPR2017-00351, Ex. 2022; IPR2017-00352, Ex. 2022 (“Settlement
Agreement”)), as well as joint requests to file the settlement agreement as
business confidential pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74(c)
(IPR2017-00350, Paper 44; IPR2017-00351, Paper 44; IPR2017-00352,
Paper 45 (“Joint Request”)). For simplicity, we refer below only to the
filings in IPR2017-00350, which are representative of the filings in each of
the proceedings.
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
IPR2017-00350 (Patent 8,887,332 B2)
IPR2017-00351 (Patent 9,015,883 B2)
IPR2107-00352 (Patent 8,646,134 B1)
3
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 these
proceedings. E.g., -00350 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
agreements or understandings, made in connection with, or in contemplation
of, the termination of [these] proceedings,” and that the filed copy of the
Settlement Agreement is a true and correct copy. E.g., id.
We instituted trials in the above-identified proceedings. Although we
decided the merits of the proceedings and entered final written decisions, the
Federal Circuit vacated those final written decisions based on the Federal
Circuit’s Arthrex decision. Bedgear, LLC v. Fredman Bros. Furniture Co.,
783 F. App’x 1029 (2019) (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 the proceedings have moved beyond the
preliminary stages, the Parties have shown adequately that the termination of
the proceedings is appropriate. Under these circumstances, we determine
that good cause exists to terminate the proceedings. 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).
IPR2017-00350 (Patent 8,887,332 B2)
IPR2017-00351 (Patent 9,015,883 B2)
IPR2107-00352 (Patent 8,646,134 B1)
4
The Parties also filed Joint Requests that the Settlement Agreement be
treated as business confidential information and be kept separate from the
file of the respective patents involved in these inter partes proceedings.
E.g., -00350 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 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, for each proceeding, the Joint Motion to Terminate
is granted, and IPR2017-00350, IPR2017-00351, and IPR2017-00352 are
terminated pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72; and
FURTHER ORDERED that, for each proceeding, the Joint Request to
File Settlement Agreement as Business Confidential is granted, and the
Settlement Agreement shall be kept separate from the files of U.S. Patent
No. 8,983,134 B2, U.S. Patent No. 9,015,883 B2, and U.S. Patent No.
8,646,134 B1, 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).
IPR2017-00350 (Patent 8,887,332 B2)
IPR2017-00351 (Patent 9,015,883 B2)
IPR2107-00352 (Patent 8,646,134 B1)
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