Cambria Company LLC

Patent Trials and Appeals Board

Aug 24, 2021

IPR2021-00216 (P.T.A.B. Aug. 24, 2021)

Trials@uspto.gov Paper No. 19
Tel: 571-272-7822 Entered: August 24, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
COSENTINO S.A.U. and C & C NORTH AMERICA INC.,
Petitioner,

v.

CAMBRIA COMPANY LLC,
Patent Owner.
_______________

IPR2021-00214 (Patent 10,252,440 B2)
IPR2021-00215 (Patent 9,289,923 B1)
IPR2021-00216 (Patent 10,195,762 B2)
PGR2021-00010 (Patent 10,773,418 B2)1
_______________

Before KRISTINA M. KALAN, CHRISTOPHER M. KAISER,
AVELYN M. ROSS, Administrative Patent Judges.

KALAN, Administrative Patent Judge.

TERMINATION
Due to Settlement After Institution of Trial and
Granting Joint Request to Treat Settlement Agreement as
Business Confidential Information
35 U.S.C. § 317; 35 U.S.C. § 327; 37 C.F.R. § 42.74

1 This Order addresses issues that are the same in each of the identified
cases. We exercise our discretion to issue one Order to be filed in each case.
The parties are not authorized to use this style heading in subsequent papers.
IPR2021-00214 (Patent 10,252,440 B2)
IPR2021-00215 (Patent 9,289,923 B1)
IPR2021-00216 (Patent 10,195,762 B2)
PGR2021-00010 (Patent 10,773,418 B2)

2
I. INTRODUCTION
With the Board’s authorization, Petitioner and Patent Owner
(collectively, “the Parties”) filed a Joint Motion to Terminate in each of the
above-captioned proceedings due to settlement. Paper 17 (“Joint Motion”).2
Along with the Joint Motion, the Parties filed a copy of their Patent License
Agreement (Ex. 2022, “Settlement Agreement”), as well as a Joint Request
that the Settlement Agreement be treated as business confidential
information and kept separate from the files of the patents involved in the
above-captioned proceedings. Paper 18 (“Joint Request”).
II. DISCUSSION
In the Joint Motion, the Parties represent that the Settlement
Agreement resolves their disputes involving the patents at issue in the
above-captioned proceedings. Joint Motion 1. The Parties also represent
that they have filed a true copy of the Settlement Agreement made in
connection with, or in contemplation of, the termination of the above-
captioned proceedings. Id. at 2. The Settlement Agreement states that it
“embod[ies] the entire understanding of the Parties.” Settlement
Agreement 14.
The Board generally expects that a case “will terminate after the filing
of a settlement agreement, unless the Board has already decided the merits
of the proceeding.” Consolidated Trial Practice Guide, 86 (Nov. 2019)3; see

2 The papers and exhibits filed in the above-captioned proceedings are
substantively the same. Therefore, we cite to the record in IPR2021-00214,
unless otherwise noted.
3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
IPR2021-00214 (Patent 10,252,440 B2)
IPR2021-00215 (Patent 9,289,923 B1)
IPR2021-00216 (Patent 10,195,762 B2)
PGR2021-00010 (Patent 10,773,418 B2)

3
35 U.S.C. §§ 317(a), 327(a); 37 C.F.R. § 42.72. Here, the Board has not
decided the merits of the above-captioned proceedings. Under these
circumstances, we determine that good cause exists to terminate the above-
captioned proceedings with respect to the Parties.
In the Joint Request, the Parties request that the Settlement Agreement
be treated as business confidential information and kept separate from the
files of the patents involved in the above-captioned proceedings. Joint
Request 1. After reviewing the Settlement Agreement, we find that it
contains confidential business information regarding the terms of settlement.
Thus, good cause exists to treat the Settlement Agreement 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), 328(a).
III. ORDER
Accordingly, it is:
ORDERED that the Joint Request to treat the Settlement Agreement
as business confidential information in each of the above-captioned
proceedings is granted, and the Settlement Agreement shall be kept separate
from the files of Patent Nos. 10,252,440 B2, 9,289,923 B1, 10,195,762 B2,
and 10,773,418 B2, and 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); and
FURTHER ORDERED that the Joint Motion to Terminate filed in
each of the above-captioned proceedings is granted, and IPR2021-00214,
IPR2021-00214 (Patent 10,252,440 B2)
IPR2021-00215 (Patent 9,289,923 B1)
IPR2021-00216 (Patent 10,195,762 B2)
PGR2021-00010 (Patent 10,773,418 B2)

4
IPR2021-00215, IPR2021-00216, and PGR2021-00010 are each terminated
with respect to Petitioner and Patent Owner.
IPR2021-00214 (Patent 10,252,440 B2)
IPR2021-00215 (Patent 9,289,923 B1)
IPR2021-00216 (Patent 10,195,762 B2)
PGR2021-00010 (Patent 10,773,418 B2)

5

For PETITIONER:

Jeffrey C. Totten
Jennifer H. Roscetti
Sydney R. Kestle
Anthony J. Berlenbach
Brooke M. Wilner
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, LLP
jeffrey.totten@finnegan.com
jennifer.roscetti@finnegan.com
sydney.kestle@finnegan.com
anthony.berlenbach@finnegan.com
brooke.wilner@finnegan.com

For PATENT OWNER:

Katherine Vidal
Louis Campbell
WINSTON & STRAWN LLP
kvidal@winston.com
llcampbell@winston.com