IPR2019-01306 (P.T.A.B. Oct. 8, 2020)

Innovation Sciences, LLC

Patent Trials and Appeals BoardOct 8, 2020

IPR2019-01306 (P.T.A.B. Oct. 8, 2020)

Trials@uspto.gov Paper 32 571-272-7822 Date: October 8, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD RESIDEO TECHNOLOGIES, INC., Petitioner, v. INNOVATION SCIENCES, LLC, Patent Owner. IPR2019-01306 Patent 9,912,983 B2 Before JONI Y. CHANG, KERRY BEGLEY, and CHRISTOPHER L. OGDEN, Administrative Patent Judges. OGDEN, Administrative Patent Judge. TERMINATION Due to Settlement After Institution of Trial 35 U.S.C. § 317; 37 C.F.R. § 42.74 IPR2019-01306 Patent 9,912,983 B2 2 By our authorization, on October 5, 2020, the parties filed a Joint Motion to Terminate the above-captioned proceeding. Paper 29 (“Joint Motion”). Along with the Joint Motion, the parties filed a confidential settlement agreement (Exhibit 1033, “Settlement Agreement”) and a Joint Motion to File Settlement Agreement as Business Confidential Information (Paper 31, “Joint Request”), in which the parties request the settlement agreement be treated as business confidential information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). The parties state that they “have settled their disputes and seek termination to promote efficiency and minimize unnecessary costs.” Paper 29, 1. They state that the patent at issue in this case was also the subject of a district court action, in which the district court dismissed Patent Owner’s claims with prejudice on September 25, 2020. Id. The parties characterize the Settlement Agreement as “a true copy of their Executed Confidential Settlement Agreement,” and “certify that there are no other agreements, oral or written, between the parties made in connection with, or in contemplation of, the termination of this proceeding.” Id. at 2. We instituted trial on January 27, 2020. Paper 19. We have not yet held an oral hearing, and we have not yet decided the merits. Under the circumstances, we determine that it is appropriate to terminate this proceeding. See 35 U.S.C. § 317(a). We also agree that the Settlement Agreement contains business confidential information, so we grant the Joint Request. See 35 U.S.C. § 317(b); 37 C.F.R. § 42.74(c). IPR2019-01306 Patent 9,912,983 B2 3 It is ORDERED that the Joint Motion is granted, and the proceeding is terminated; and FURTHER ORDERED that the Joint Request is granted, and under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), the Settlement Agreement (Exhibit 1033) shall be kept separate from the file of Patent No. 9,912,983 B2, and shall only be made available, on written request to the Board, to Federal Government agencies, or to any person on a showing of good cause. IPR2019-01306 Patent 9,912,983 B2 4 For PETITIONER: Brian Berliner bberliner@omm.com Cameron Westin cwestin@omm.com For PATENT OWNER: Donald Jackson djackson@dbjg.com James Berquist jberquist@dbjg.com Alan Wright awright@dbjg.com Aldo Noto anoto@davidsonberquist.com