Hammond Development International, Inc.

Patent Trials and Appeals Board

Sep 21, 2020

IPR2020-01058 (P.T.A.B. Sep. 21, 2020)

Trials@uspto.gov Paper 9
571-272-7822 Date: September 21, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

AMAZON.COM, INC.,
Petitioner,

v.

HAMMOND DEVELOPMENT INTERNATIONAL, INC.,
Patent Owner.
____________

IPR2020-01043 (Patent 9,716,732), IPR2020-01051 (Patent 9,456,040),
IPR2020-01058 (Patent 9,420,011), IPR2020-01064 (Patent 10,193,935),
IPR2020-01066 (Patent 9,705,937)1
____________

Before MICHELLE N. WORMMEESTER, AMBER L. HAGY, and
KRISTI L. R. SAWERT, Administrative Patent Judges.

HAGY, Administrative Patent Judge.

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

1 We exercise our discretion to issue one order to be entered in each case.
The parties are not authorized to use a caption identifying multiple cases.
IPR2020-01043 (Patent 9,716,732), IPR2020-01051 (Patent 9,456,040),
IPR2020-01058 (Patent 9,420,011), IPR2020-01064 (Patent 10,193,935),
IPR2020-01066 (Patent 9,705,937)

2
I. INTRODUCTION
With the Board’s authorization, Petitioner and Patent Owner
(collectively referred to as “the Parties”) filed a Joint Motion to Terminate in
each of the above-identified proceedings due to settlement. Paper 8 (“Joint
Motion”).2 In support of each Joint Motion, the Parties filed a Joint
Stipulation of Partial Dismissal (Ex. 1080, “Stipulation”) and a Confidential
Covenant Not to Sue (Ex. 1081, “Covenant”). The Parties additionally filed
a Joint Request to treat the Covenant as business confidential information
pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) in each of the
above-identified proceedings. Paper 6 (“Joint Request”).
II. DISCUSSION
In each Joint Motion, the Parties represent that they have reached an
agreement to jointly seek termination of the above-identified inter partes
review proceedings, as set forth in the filed copies of the Covenant and
Stipulation. Joint Motion 2–3. The Parties further represent that the
Stipulation and Covenant resolve all currently pending Patent Office and
District Court proceedings between the Parties involving the above-
referenced patents. Id.
The above-identified proceedings are at an early stage, and we have
not yet decided whether to institute trial in the proceedings. In view of the
early stage of the proceedings and the settlement between the Parties, we
determine that good cause exists to dismiss the petitions and terminate the

2 All citations are to IPR2020-01043 with the understanding that the other
proceedings include papers having substantially the same substantive
content.
IPR2020-01043 (Patent 9,716,732), IPR2020-01051 (Patent 9,456,040),
IPR2020-01058 (Patent 9,420,011), IPR2020-01064 (Patent 10,193,935),
IPR2020-01066 (Patent 9,705,937)

3
proceedings with respect to the Parties.
The Parties also filed Joint Requests that the Covenant be treated as
business confidential information and be kept separate from the file of the
respective patent involved in this inter partes proceeding. Joint Request 1.
After reviewing the Covenant between Petitioner and Patent Owner, we find
that the Covenant contains confidential business information regarding the
terms of settlement. We determine that good cause exists to treat the
Covenant 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 paper 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 in each of the above-
identified proceedings is granted, and IPR2020-01043, IPR2020-01051,
IPR2020-01058, IPR2020-01064, and IPR2020-01066 are terminated; and
FURTHER ORDERED that the Joint Requests to Treat the Settlement
Agreement as Business Confidential Information are granted, and the
Covenant shall be kept separate from the files of the above-referenced
patents, 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).

IPR2020-01043 (Patent 9,716,732), IPR2020-01051 (Patent 9,456,040),
IPR2020-01058 (Patent 9,420,011), IPR2020-01064 (Patent 10,193,935),
IPR2020-01066 (Patent 9,705,937)

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FOR PETITIONER:
Colin B. Heideman
Joseph R. Re
Jeremy A. Anapol
Cheryl T. Burgess
Christie R.W. Matthaei
KNOBBE, MARTENS, OLSON & BEAR, LLP
2cbh@knobbe.com
2jrr@knobbe.com
2jaa@knobbe.com
2ctb@knobbe.com
2crw@knobbe.com

FOR PATENT OWNER:
Andrew J. Wright
Joseph P. Oldaker
Matthew C. Juren
NELSON BUMGARDNER ALBRITTON P.C.
andrew@nbafirm.com
joseph@nbafirm.com
matthew@nbafirm.com