NIKE, Inc.

Patent Trials and Appeals Board

Dec 17, 2021

IPR2021-00159 (P.T.A.B. Dec. 17, 2021)

Trials@uspto.gov Paper 30
Tel: 571-272-7822 Entered: December 17, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SKECHERS U.S.A., INC.,
Petitioner,

v.

NIKE, INC.,
Patent Owner.
____________

IPR2021-00159
Patent 10,098,412 B2
____________

Before KEN B. BARRETT, SCOTT A. DANIELS, and
GEORGE R. HOSKINS, Administrative Patent Judges.

DANIELS, Administrative Patent Judge.

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

IPR2021-00159
Patent 10,098,412 B2

2
On December 2, 2021, with Board authorization, Petitioner and Patent
Owner (collectively “the Parties”) filed a Joint Motion to Terminate
Pursuant to 35 U.S.C. § 317(a) the above-captioned proceeding. Paper 28
(“Joint Motion”). Along with the Joint Motion, the Parties filed a copy of
their confidential Settlement Agreement (Ex. 1035), as well as a Joint
Motion to Treat Settlement Agreement as Business Confidential Information
(Paper 29, “Joint Request”). See 37 C.F.R. § 42.74(c) (a party to a
settlement may request that the settlement agreement be treated as business
confidential and be kept separate from the patent file).
In the Joint Motion, the Parties represent that they have reached an
agreement to jointly seek termination of the above-identified inter partes
review proceeding, and that they have filed a true copy of the Settlement
Agreement as Exhibit 1035. Joint Motion 1. The Parties further represent
that the Settlement Agreement “resolves all underlying disputes between the
Parties, including this proceeding.” Id.
This proceeding is at a sufficiently early stage where Patent Owner
has yet to file a sur-reply and we have not rendered a final decision on the
merits. In view of the early stage of the proceeding and the settlement
between the Parties, we determine that good cause exists to terminate the
proceeding with respect to the Parties. This Order does not constitute a final
written decision pursuant to 35 U.S.C. § 318(a).
The parties also ask that the Settlement Agreement be treated as
business confidential information and be kept separate from the file of the
challenged patent. Joint Request 1. We determine that it is appropriate to
treat the Settlement Agreement as business confidential information, and to
IPR2021-00159
Patent 10,098,412 B2

3
keep that document separate from the file of the challenged patent, pursuant
to 37 C.F.R. § 42.74(c).

For the foregoing reasons, it is:
ORDERED that the Joint Motion is granted and this proceeding is
terminated with respect to Petitioner and Patent Owner;
FURTHER ORDERED that the Joint Request that the confidential
Settlement Agreement (Ex. 1035) be treated as business confidential
information, and be kept separate from the patent file, is granted in this
proceeding.

IPR2021-00159
Patent 10,098,412 B2

4
PETITIONER:

Samuel K. Lu
Michael R. Fleming
Jonathan M. Lindsay
Crawford Maclain Wells
IRELL & MANELLA LLP
slu@irell.com
mfleming@irell.com
jlindsay@irell.com
mwells@irell.com

PATENT OWNER:

Christopher J. Renk
Michael J. Harris
Bonnie Phan
Neda Dadpey (Pro Hac Vice)
ARNOLD & PORTER KAYE SCHOLER LLP
chris.renk@arnoldporter.com
michael.harris@arnoldporter.com
bonnie.phan@arnoldporter.com
neda.dadpey@arnoldporter.com