InVue Security Products, Inc.

Patent Trials and Appeals Board

Jul 8, 2020

IPR2020-00032 (P.T.A.B. Jul. 8, 2020)

Trials@uspto.gov Paper No. 14
571-272-7822 Date: July 8, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

VANGUARD PRODUCTS GROUP, INC.,
D/B/A VANGUARD PROTEX GLOBAL,
Petitioner,
v.
INVUE SECURITY PRODUCTS INC.,
Patent Owner.

IPR2020-00032 (Patent 9,972,178 B2)
IPR2020-00048 (Patent 9,747,765 B1)
IPR2020-00066 (Patent 9,805,564 B1)
IPR2020-00069 (Patent 10,043,358 B1) 1

Before MICHAEL R. ZECHER, LYNNE E. PETTIGREW,
BARBARA A. PARVIS, STACEY G. WHITE, SHEILA F. McSHANE,
and CYNTHIA M. HARDMAN, Administrative Patent Judges.2

PER CURIAM.

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

1 This Order applies to each of the above-listed proceedings. We exercise
our discretion to issue one Order to be filed in each proceeding. The parties
are not authorized to use this heading in any subsequent papers.
2 This is not an expanded panel of the Board. It is a listing of all Judges on
the panels of the above-referenced proceedings.
IPR2020-00032 (Patent 9,972,178 B2)
IPR2020-00048 (Patent 9,747,765 B1)
IPR2020-00066 (Patent 9,805,564 B1)
IPR2020-00069 (Patent 10,043,358 B1)

2
On July 1, 2020, the parties filed Joint Motions to Terminate pursuant
to 35 U.S.C. § 317 in each of the above-captioned cases. IPR2020-00032,
Paper 11 (“Mot.”)3; IPR2020-00048, Paper 11; IPR2020-00066, Paper 10;
IPR2020-00069, Paper 11. In addition, pursuant to 35 U.S.C. § 317(b) and
37 C.F.R. § 42.74(c), Petitioner filed a copy of a Settlement Agreement
(Paper 13) and a Joint Request That the Parties’ Agreements Be Treated As
Business Confidential Information, requesting that the agreements be kept
separate from the patent file in each of the cases and be treated as business
confidential information (Paper 12).
The Board has instituted review in these cases, but has not yet issued
any final written decision in any of these cases. The parties indicate that
terminations of the proceedings are appropriate because a settlement has
been reached disposing of all disputes between the parties. Mot. 2–3. The
parties represent that there are no collateral agreements or understandings
made in connection with, or in contemplation of, the termination of the
proceedings. Id. at 3.
Under these circumstances, we determine that it is appropriate to
terminate each case without rendering a final written decision. 37 C.F.R.
§ 42.74. Therefore, the Joint Motions to Terminate are granted.

3 Citations are to IPR2020-00032 papers as representative, unless otherwise
noted.
IPR2020-00032 (Patent 9,972,178 B2)
IPR2020-00048 (Patent 9,747,765 B1)
IPR2020-00066 (Patent 9,805,564 B1)
IPR2020-00069 (Patent 10,043,358 B1)

3

Accordingly, it is
ORDERED that the parties’ requests that the Settlement Agreements
be treated as business confidential information, to be kept separate from the
patent file, are granted;
FURTHER ORDERED that the Joint Motions to Terminate are
granted; and
FURTHER ORDERED that the proceedings are terminated.

IPR2020-00032 (Patent 9,972,178 B2)
IPR2020-00048 (Patent 9,747,765 B1)
IPR2020-00066 (Patent 9,805,564 B1)
IPR2020-00069 (Patent 10,043,358 B1)

4
FOR PETITIONER:
Andriy Lytvyn
Anton Hopen
Nicholas Pfeifer
SMITH & HOPEN, P.A.
andriy.lytvyn@smithhopen.com
anton.hopen@smithhopen.com
np@smithhopen.com

FOR PATENT OWNER:
Tim Williams
Scott Cole
DORITY & MANNING, P.A.
timw@dority-manning.com
scole@dority-manning.com

Trent Kirk
INVUE SECURITY PRODUCTS INC.
trentkirk@invue.com