Milwaukee Electric Tool Corporation

Patent Trials and Appeals Board

Oct 13, 2020

PGR2020-00056 (P.T.A.B. Oct. 13, 2020)

Trials@uspto.gov Paper 17
571-272-7822 Entered: October 13, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

APEX TOOL GROUP, LLC,
Petitioner,
v.
MILWAUKEE ELECTRIC TOOL CORPORATION,
Patent Owner.
____________

PGR2020-00056
Patent 10,422,617 B1
____________

Before GRACE KARAFFA OBERMANN, JOHN A. HUDALLA, and
AARON W. MOORE, Administrative Patent Judges.

OBERMANN, Administrative Patent Judge.

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

PGR2020-00056
Patent 10,422,617 B1

2

With Board preauthorization, Petitioner and Patent Owner filed a joint
motion to terminate the proceeding (Paper 15) and a joint request (Paper 16)
to file a copy of a Confidential Settlement Agreement (Exhibit 2013) as
business confidential information. The parties represent that Exhibit 2013 is
a “true and correct copy” of their resolution to terminate the proceeding.
Paper 15, 1. The parties also “represent that there are no other agreements,
oral or written . . . made in connection with, or in contemplation of, the
termination of this proceeding.” Id. Termination is proper because the Board
has yet to issue an institution decision and the proceeding is still at an early
stage. Paper 15, 2 (citing Samsung Elecs. Co. v. Fundamental Innovation
Sys. Int’l, Ltd., IPR2018-00605 (PTAB July 16, 2018) (Paper No. 10)).
We next turn to the parties’ request to keep Exhibit 2013 separate
from the file of the challenged patent and made available only to Federal
Government agencies on written request, or to any person on a showing of
good cause. Paper 16, 1. The parties ask us to treat Exhibit 2013 “as business
confidential information” (id.), but make no attempt to show that
Exhibit 2013, in fact, contains business confidential information. See
generally, Paper 15, Paper 16. Nevertheless, based on our own review of
Exhibit 2013, we find that the document contains express terms requiring the
parties to maintain its confidentiality. Exhibit 2013, Article 9 (filed for
viewing by parties and Board only). On this record, we find that good cause
exists to treat Exhibit 2013 as business confidential information pursuant to
37 C.F.R. § 42.74(c).

PGR2020-00056
Patent 10,422,617 B1

3

It is
ORDERED that the parties’ joint motion to terminate the proceeding
(Paper 15) is granted;
FURTHER ORDERED that the parties’ joint request (Paper 16) to
keep Exhibit 2013 separate from the file of U.S. Patent No. 10,422,617, and
made available only to Federal Government agencies on written request, or
to any person on a showing of good cause, pursuant to 37 C.F.R. § 42.74(c)
is granted; and
FURTHER ORDERED that this proceeding is terminated and the
Petition is dismissed.

PETITIONER:
Bradley Micsky
Nathan Louwagie
CARLSON, CASPERS, VANDENBURGH & LINDQUIST, P.A.
apex617pgr@carlsoncaspers.com
bmicsky@carlsoncaspers.com
nlouwagie@carlsoncaspers.com

PATENT OWNER:
Jason White
Alexander Stein
MORGAN LEWIS & BOCKIUS
Jason.white@morganlewis.com
Alexander.stein@morganlewis.com