ABM International, Inc.

Patent Trials and Appeals Board

Dec 6, 2021

IPR2020-01371 (P.T.A.B. Dec. 6, 2021)

Trials@uspto.gov Paper 36
571-272-7822 Date: December 6, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

JUKI AMERICA, INC. and JUKI CORPORATION,
Petitioner,

v.

ABM INTERNATIONAL, INC.,
Patent Owner.
____________

IPR2020-01371 (Patent 9,840,797 B2)
IPR2020-01372 (Patent 10,100,449 B2)
IPR2020-01373 (Patent 10,240,270 B2)1
____________

Before GEORGE R. HOSKINS, ERIC C. JESCHKE, and
SCOTT B. HOWARD, Administrative Patent Judges.

HOSKINS, Administrative Patent Judge.

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

1 This Order is being filed in each proceeding listed in the caption. The
parties may use this style caption only if the paper includes a statement
certifying that the identical paper is being filed in each proceeding listed in
the caption.
IPR2020-01371 (Patent 9,840,797 B2)
IPR2020-01372 (Patent 10,100,449 B2)
IPR2020-01373 (Patent 10,240,270 B2)

2

I. INTRODUCTION
Petitioner and Patent Owner (collectively “the Parties”) have
requested that the above-identified inter partes review proceedings be
terminated pursuant to a settlement. Specifically, on November 24, 2021,
the Parties jointly requested via an e-mail communication that the Board
authorize the filing of Joint Requests to Terminate these proceedings, and
the Board granted this authorization via a responsive e-mail communication
on the same day. See IPR2020-01371 & 01372, Ex. 3001; IPR2021-01373,
Ex. 3002. On December 1, 2021, the Parties filed a Joint Request to
Terminate Proceedings Pursuant to 35 U.S.C. § 317(a) (Paper 342, “Joint
Motion”) in each of these proceedings. The Parties also filed a copy of a
settlement agreement (Ex. 2008, “Settlement Agreement”) and a joint
request that the Settlement Agreement be treated as business confidential
information and kept separate under 37 C.F.R. § 42.74(c) (Paper 35, “Joint
Request”) in each of the proceedings.
II. DISCUSSION
Under 35 U.S.C. § 317(a), “[a]n 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, unless the Office has decided
the merits of the proceeding before the request for termination is filed.” It is
also provided in 35 U.S.C. § 317(a) that if no petitioner remains in the inter
partes review, the Office may terminate the review.

2 For expediency, we cite to the Papers and Exhibits filed in IPR2020-01371,
except as noted otherwise. Similar Papers and Exhibits were filed in
IPR2020-01372 and IPR2020-01373.
IPR2020-01371 (Patent 9,840,797 B2)
IPR2020-01372 (Patent 10,100,449 B2)
IPR2020-01373 (Patent 10,240,270 B2)

3

In the Joint Motion, the Parties represent that they have reached an
agreement to seek termination of these proceedings, that the filed copy of the
Settlement Agreement is a true and correct copy, and that “there are no other
agreements or understandings between Petitioner[] and Patent Owner made
in connection with, or in contemplation of, the termination of these
proceedings.” Joint Motion 1–2.
We instituted trial in these proceedings on February 11, 2021.
Paper 8. Oral argument has not yet taken place, we have not yet decided the
merits of the proceedings, and final written decisions have not been entered.
Notwithstanding that the proceedings have moved beyond the preliminary
stage, the Parties have shown adequately that termination of the proceedings
is appropriate. Under these circumstances, we determine that good cause
exists to terminate the proceedings.
The Parties also requested that the Settlement Agreement be treated as
business confidential information and be kept separate from the files of U.S.
Patent Nos. 9,840,797; 10,100,449; and 10,240,270. 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 pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
This Order does not constitute a final written decision pursuant to
35 U.S.C. § 318(a).
IPR2020-01371 (Patent 9,840,797 B2)
IPR2020-01372 (Patent 10,100,449 B2)
IPR2020-01373 (Patent 10,240,270 B2)

4

III. ORDER
Accordingly, for the reasons discussed above, it is:
ORDERED that the Joint Motions are granted, and IPR2020-01371,
IPR2020-01372, and IPR2020-01373 are terminated, pursuant to 35 U.S.C.
§ 317(a) and 37 C.F.R. § 42.72; and
FURTHER ORDERED that the Joint Requests are granted, and the
Settlement Agreement shall be kept separate from the files of U.S. Patent
Nos. 9,840,797; 10,100,449; and 10,240,270, 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).

IPR2020-01371 (Patent 9,840,797 B2)
IPR2020-01372 (Patent 10,100,449 B2)
IPR2020-01373 (Patent 10,240,270 B2)

5

For PETITIONER:
James Sobieraj (lead counsel)
Robert Mallin
Tadashi Horie
Joshua P. Smith
CROWELL & MORING LLP
JSobieraj@crowell.com
RMallin@ crowell.com
THorie@ crowell.com
JoshSmith@ crowell.com

For PATENT OWNER:

Michael J. Berchou (lead counsel)
Timothy W. Menasco
Brian B. Shaw
HARTER SECREST & EMERY LLP
mberchou@hselaw.com
tmenasco@hselaw.com
bshaw@hselaw.com
patents@hselaw.com