Continental Intermodal Group - Trucking LLC

Patent Trials and Appeals Board

Nov 16, 2020

IPR2019-01393 (P.T.A.B. Nov. 16, 2020)

Trials@uspto.gov Paper 39
571.272.7822 Date: November 16, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SAND REVOLUTION II, LLC,
Petitioner,

v.

CONTINENTAL INTERMODAL GROUP – TRUCKING LLC,
Patent Owner.
____________

IPR2019-01393
Patent 8,944,740 B2
____________

Before SCOTT C. WEIDENFELLER, Vice Chief Administrative Patent
Judge, SCOTT C. MOORE, and RYAN H. FLAX, Administrative Patent
Judges.

FLAX, Administrative Patent Judge.

TERMINATION
Due to Settlement After Institution of Trial
Granting Joint Motion to Treat Settlement Agreement
Documents as Confidential Information
35 U.S.C. § 317(a); 37 C.F.R. § 42.72; 37 C.F.R. § 42.74(c)

IPR2019-01393
Patent 8,944,740 B2

2
Sand Revolution II, LLC is the Petitioner in this inter partes review of
U.S. Patent 8,944,740 B2 (“the ’740 patent,” Ex. 1001), and Continental
Intermodal Group-Trucking LLC is the Patent Owner. The Board instituted
trial in this proceeding on June 16, 2020. Paper 24. No final decision has
been rendered by the Board in this proceeding.
The parties have now filed a Joint Motion to Terminate the
proceeding (Paper 38) on the basis of a settlement reached by the parties.
See 35 U.S.C. § 317(a). 35 U.S.C. § 317(b) states:
Any agreement or understanding between the patent owner and
a petitioner, including any collateral agreements referred to in
such agreement or understanding, made in connection with, or in
contemplation of, the termination of an inter partes review under
this section 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.
Id. Pursuant to that statute, and in connection with the Joint Motion to
Terminate, the parties filed a copy of their written settlement agreement
resolving this inter partes review and the related district court litigation.
Exhibit 2031 (“Settlement Agreement”).
The parties also move that the Settlement Agreement be treated as
confidential information. Paper 38. This request is granted.
Generally, the Board expects that a proceeding will terminate after the
filing of a settlement agreement, unless the Board has already decided the
merits of the proceeding. See 35 U.S.C. § 317(a) (“An 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.”); 37 C.F.R. § 42.72 (“The Board may terminate a
IPR2019-01393
Patent 8,944,740 B2

3
trial without rendering a final written decision, where appropriate, including
. . . pursuant to a joint request under 35 U.S.C. 317(a)”). As noted above,
the Board has not yet rendered a final decision here. Thus, we grant the
Joint Motion to Terminate the proceedings.
This Decision does not constitute a final written decision pursuant to
35 U.S.C. § 318(a).

In consideration of the foregoing, it is hereby:
ORDERED the Joint Motion to Treat the Settlement Agreement
(Ex. 2031) as confidential information is granted, and this agreement shall
be kept separate from the public files of the ’740 patent, and made available
only to Federal Government agencies on written request, or to any person on
a showing of good cause, under 35 U.S.C. § 317(b) and 37 C.F.R.
§ 42.74(c); and
FURTHER ORDERED that the Joint Motion to Terminate this
proceeding is granted, and this proceeding is hereby terminated under
35 U.S.C. § 317(a) and 37 C.F.R. § 42.72.

IPR2019-01393
Patent 8,944,740 B2

4

For PETITIONER:

James D. Stein
LEE & HAYES P.C.
James.stein@leehayes.com

Armon B. Shahdadi
Ben D. Bailey
Brannon C. McKay
Leonard J. Weinstein
CLAYTON, MCKAY & BAILEY, PC
armon@cmblaw.com
ben@cmblaw.com
brannon@cmblaw.com
leonard@cmblaw.com

For PATENT OWNER:

Wm. Tucker Griffith
Travis W. McCallon
LATHROP GAGE LLP
tucker.griffith@lathropgpm.com
travis.McCallon@lathropgpm.com
internalip@lathropgpm.com

Anna Quinn
A. Justin Poplin
AVANT LAW GROUP
aquinn@avant.law
jpoplin@avant.law