Slingshot Printing LLC

Patent Trials and Appeals Board

Mar 29, 2021

IPR2020-01086 (P.T.A.B. Mar. 29, 2021)

Trials@uspto.gov Paper: 16
571.272.7822 Entered: March 29, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

HP INC.,
Petitioner,
v.
SLINGSHOT PRINTING LLC,
Patent Owner.
____________

IPR2020-01084 (Patent 6,394,593 B1)
IPR2020-01085 (Patent 6,243,115 B1)
IPR2020-01086 (Patent 7,014,299 B2)
IPR2020-01090 (Patent 7,244,015 B2)
____________

Before GARTH D. BAER, JOHN D. HAMANN, and
STACY B. MARGOLIES, Administrative Patent Judges.1

BAER, Administrative Patent Judge.

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

1 We exercise our discretion to issue one order for all of the above-captioned
proceedings. The proceedings have not been consolidated, and the parties
are not authorized to use this caption format.
IPR2020-01084 (Patent 6,394,593 B1)
IPR2020-01085 (Patent 6,243,115 B1)
IPR2020-01086 (Patent 7,014,299 B2)
IPR2020-01090 (Patent 7,244,015 B2)

2
I. INTRODUCTION
In each of the above-captioned proceedings, with the Board’s prior
authorization, HP Inc. and Slingshot Printing LLC (collectively “the
Parties”) filed a Joint Motion to Terminate. Paper 15 (“Joint Motion”).2 In
support of each Joint Motion, the Parties filed a copy of a written,
confidential “SETTLEMENT, LICENSE, AND RELEASE AGREEMENT”
(“Settlement Agreement”). IPR2020-01084, Ex. 1016; IPR2020-01085,
Ex. 1008; IPR2020-01086, Ex. 1016; IPR2020-01090, Ex. 1017. The
Parties also filed a Joint Request to Treat Settlement Agreement as Business
Confidential Information. Paper 16 (“Joint Request”).
II. DISCUSSION
In each Joint Motion, the Parties state that they “have settled their
dispute and executed a settlement agreement to terminate this proceeding.”
Joint Motion 1. The Parties further state that their “settlement agreement is
in writing, and a true and correct copy is being filed under 37 C.F.R.
§ 42.74(b),” and that “there are no other agreements, oral or written,
between the parties made in connection with, or in contemplation of, the
termination of this proceeding.” Id.
There are strong public policy reasons to favor settlement. Office
Patent Trial Practice Guide, 84 Fed. Reg. 64,280 (Nov. 21, 2019).
Although we have decided to institute a trial in IPR2020-01084, IPR2020-
01085, IPR2020-01086, and IPR2020-01090, we have not conducted an oral

2 For purposes of expediency, we refer to the motion and request filed in
IPR2020-01084. The parties filed similar papers in each of the other
proceedings captioned above.
IPR2020-01084 (Patent 6,394,593 B1)
IPR2020-01085 (Patent 6,243,115 B1)
IPR2020-01086 (Patent 7,014,299 B2)
IPR2020-01090 (Patent 7,244,015 B2)

3
hearing, and we have not decided the merits in any of these proceedings.
Therefore, in view of the settlement agreement between the Parties, we
determine that good cause exists and that it is appropriate to terminate each
of these proceedings, without rendering a final written decision. See 35
U.S.C. § 317(a); 37 C.F.R. §§ 42.72, 42.74.
In each Joint Request, the Parties jointly request that the Settlement
Agreement “(i) be treated as business confidential information, (ii) be
maintained separate from the publicly available file of the involved patent,
and (iii) shall be made available only to Federal Government agencies on
written request or persons showing good cause on written request, pursuant
to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).” Joint Request 1.
After reviewing the Settlement Agreement, we find that it contains
confidential business information regarding the terms of settlement. We
determine that good cause exists to treat the Settlement Agreement as
business confidential information under 37 C.F.R. § 42.74(c), to keep it
separate from the files of the involved patents and associated proceedings,
and to limit its availability as the Parties request.
This Order does not constitute a final written decision pursuant to
35 U.S.C. § 318(a).
III. ORDER
Accordingly, it is
ORDERED that the Joint Motions to Terminate are granted;
FURTHER ORDERED that the proceedings in IPR2020-01084,
IPR2020-01085, IPR2020-01086, and IPR2020-01090 are terminated; and
IPR2020-01084 (Patent 6,394,593 B1)
IPR2020-01085 (Patent 6,243,115 B1)
IPR2020-01086 (Patent 7,014,299 B2)
IPR2020-01090 (Patent 7,244,015 B2)

4
FURTHER ORDERED that the Joint Requests to Treat Settlement
Agreement as Business Confidential Information are granted, and the
Settlement Agreement shall remain designated as “Parties and Board Only”
in Board’s filing system, shall made available only to Federal Government
agencies on written request, or to any person on a showing of good cause,
and shall be kept separate from the files of the involved patents and
associated proceedings, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
§ 42.74(c).

IPR2020-01084 (Patent 6,394,593 B1)
IPR2020-01085 (Patent 6,243,115 B1)
IPR2020-01086 (Patent 7,014,299 B2)
IPR2020-01090 (Patent 7,244,015 B2)

5
For PETITIONER:

Dion M. Bregman
Andrew V. Devkar
Jacob A. Snodgrass
Jason Gettleman
MORGAN, LEWIS & BOCKIUS LLP
dion.bregman@morganlewis.com
andrew.devkar@morganlewis.com
jacob.snodgrass@morganlewis.com
jason.gettleman@morganlewis.com

For PATENT OWNER:

Jason S. Charkow
Chandran B. Iyer
Richard Juang
GOLDBERG SEGALLA LLP
jcharkow@goldbergsegalla.com
ciyer@goldbergsegalla.com
rjuang@goldbergsegalla.com

Tedd W. Van Buskirk
Michael H. Teschner
LERNER, DAVID, LITTENBERG, KRUMHOLZ & MENTLIK LLP
tvanbuskirk@lernerdavid.com
MTeschner.ipr@ldlkm.com