Sierra Pacific Industries

Patent Trials and Appeals Board

Oct 5, 2020

IPR2019-00933 (P.T.A.B. Oct. 5, 2020)

Trials@uspto.gov Paper 90
571.272.7822 Date: October 5, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

KOLBE & KOLBE MILLWORK CO., INC.,
Petitioner,

v.

SIERRA PACIFIC INDUSTRIES,
Patent Owner.
____________

Case IPR2019-00933
Patent 8,561,365 B2
____________

Before CARL M. DEFRANCO, TIMOTHY J. GOODSON, and
RYAN H. FLAX, Administrative Patent Judges.

FLAX, Administrative Patent Judge.

TERMINATION
Due to Settlement After Institution of Trial; and
Granting Joint Motion to Treat Settlement Agreement
Documents as Business Confidential Information
35 U.S.C. § 317(a); 37 C.F.R. § 42.72; 37 C.F.R. § 42.74(c)

IPR2019-00933
Patent 8,561,365 B2

2
Kolbe & Kolbe Millwork Co., Inc. is the Petitioner in this inter partes
review of U.S. Patent No. 8,561,365 B2 (“the ’365 patent”), and Sierra
Pacific Industries is the Patent Owner. Pursuant to 35 U.S.C. § 314, the
Board instituted trial on October 9, 2019, on all grounds of unpatentability
set forth in the Petition (Paper 1). Paper 14. A final hearing was held on
August 5, 2020. Paper 78.
The parties have now filed a Joint Motion to Terminate the
proceeding (Paper 84) on the basis of a settlement reached by the parties.
See 35 U.S.C. § 317(a). Pursuant to 35 U.S.C. § 317(b):
Any agreement or understanding between the patent owner and
a petitioner, including any collateral agreements referred to in
such agreement or understanding, made in connection with, or in
contemplation of, the termination of an inter partes review under
this section shall be in writing and a true copy of such agreement
or understanding shall be filed in the Office before the
termination of the inter partes review as between the parties.
Id. Pursuant to that statute, in connection with the Joint Motion to
Terminate, the parties filed a copy of their written settlement agreement
resolving this inter partes review and the related district court litigation.
Exhibit 1073 (“Settlement Agreement”).
The parties also filed a Joint Request (Motion) that the Settlement
Agreement be treated as business confidential information. Paper 85. This
request is granted.
Generally, 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. 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,
IPR2019-00933
Patent 8,561,365 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)”). Here, although the
Board was on track to enter a final written decision by the statutory deadline,
the Board had not yet done so by the time the parties advised the Board of
their intention to jointly seek termination due to settlement. Thus, we grant
the Joint Motion to Terminate the proceedings.
This Decision does not constitute a final written decision pursuant to
35 U.S.C. § 318(a).

In consideration of the foregoing, it is hereby:
ORDERED the Joint Request to Treat the Settlement Agreement
(Ex. 1073) as business confidential information is granted, and this
agreement shall be kept separate from the public files of the ’365 patent, and
made available only to Federal Government agencies on written request, or
to any person on a showing of good cause, under 35 U.S.C. § 317(b) and
37 C.F.R. § 42.74(c); and
FURTHER ORDERED that the Joint Motion to Terminate this
proceeding is granted, and this proceeding is hereby terminated under
35 U.S.C. § 317(a) and 37 C.F.R. § 42.72.
IPR2019-00933
Patent 8,561,365 B2

4

For PETITIONER:

Kevin P. Moran
Shane Brunner
MICHAEL BEST & FRIEDRICH LLP
kpmoran@michaelbest.com
sabrunner@michaelbest.com

For PATENT OWNER:

Daniel W. McDonald
Thomas R. Johnson
Michael S. Wagner
Karen L. Beckman, Ph.D.
MERCHANT & GOULD P.C.
dmcdonald@merchantgould.com
tjohnson@merchantgould.com
mwagner@merchantgould.com
kbeckman@merchantgould.com
SierraPacific_IPR@merchantgould.com