L&L CANDLE COMPANY LLC

Patent Trials and Appeals Board

Oct 9, 2020

IPR2020-01233 (P.T.A.B. Oct. 9, 2020)

Trials@uspto.gov Paper 8
571-272-7822 Entered: October 9, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

DECORWARE INTERNATIONAL, INC.,
Petitioner,

v.

L&L CANDLE COMPANY LLC,
Patent Owner.
____________

IPR2020-01233
Patent 9,366,402 B2
____________

Before JUSTIN T. ARBES, JOHN F. HORVATH, and
NABEEL U. KHAN, Administrative Patent Judges.

KHAN, Administrative Patent Judge.

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

IPR2020-01233
Patent 9,366,402 B2
2
Petitioner and Patent Owner (collectively referred to as “the Parties”)
have requested that the instant proceeding be terminated. In an email dated
September 30, 2020, we authorized the Parties to a file joint motion to
terminate the instant proceeding. On October 1, 2020, the Parties filed a
Joint Motion to Terminate this proceeding. See Paper 6 (“Joint Motion”), 1.
Along with the Joint Motion, the Parties filed a Settlement Agreement
(Ex. 2001 (unredacted, confidential version) and Ex. 2002 (public, redacted
version)), as well as a Joint Request to File Settlement Agreement as
Business Confidential Information and to Maintain Said Agreement Separate
from the Public File pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c)
(Paper 7 (“Joint Request”)).
In the Joint Motion, the Parties represent that they have reached an
agreement to jointly seek termination of this proceeding, and that the filed
copy of the Settlement Agreement is a true copy. Joint Motion 1. The
Parties further represent that there are “no other agreements or
understandings, oral or written, express or implied, between the parties,
including any collateral agreements, made in connection with, or in
contemplation of, the termination of the present proceeding with respect to
Petitioner.” Joint Motion 1. The Parties also represent that there no other
proceedings before the Board involving U.S. Patent No. 9,366,402 B2 (“the
ʼ402 Patent”) and that the Parties have moved to dismiss, with prejudice, the
underlying District Court litigation and the investigation before the
International Trade Commission, involving the ʼ402 Patent. Joint Motion 4.
Generally, the Board expects that a proceeding will terminate after the
filing of a settlement agreement. 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,
IPR2020-01233
Patent 9,366,402 B2
3
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
trial without rendering a final written decision, where appropriate, including
. . . pursuant to a joint request under 35 U.S.C. 317(a).”); see also Patent
Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 86,
available at https://www.uspto.gov/TrialPracticeGuideConsolidated (“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.”). This proceeding is at an early stage. Patent Owner has not
filed a preliminary response, and we have not yet decided whether to
institute a trial in the proceeding. In view of the early stage of the
proceeding and the settlement between the Parties, we determine that
granting the Parties’ Joint Motion will lead to a “just, speedy, and
inexpensive resolution” in this proceeding. 37 C.F.R. § 42.1(b).
Accordingly, we terminate the instant proceeding.
The Parties also filed a Joint Request that the Settlement Agreement
be treated as business confidential information and be kept separate from the
file of the patent involved in this proceeding. Paper 7. We determine that
good cause exists to treat the Settlement Agreement 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 Decision does not constitute a final written decision pursuant to
35 U.S.C. § 318(a).
ORDER
Accordingly, for the reasons discussed above, it is:
ORDERED that the Joint Motion to Terminate (Paper 6) is granted,
the proceeding is terminated; and
IPR2020-01233
Patent 9,366,402 B2
4
FURTHER ORDERED that the Joint Request (Paper 7) to Treat the
Settlement Agreement (Exhibit 2001) as Business Confidential Information
is granted, and the Settlement Agreement shall be kept separate from the file
of Patent 9,366,402 B2, 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).

IPR2020-01233
Patent 9,366,402 B2
5
PETITIONER:
Patrick A. Doody
Kecia J. Reynolds
Cheng C. (Jack) Ko
PILLSBURY WINTHROP SHAW PITTMAN LLP
patrick.doody@pillsburylaw.com
kecia.reynolds@pillsburylaw.com
jack.ko@pillsburylaw.com

PATENT OWNER:
Thomas Millikan
Joseph Reid
PERKINS COIE LLP
millikan-ptab@perkinscoie.com
reid-ptab@perkinscoie.com