Air Dynamics Industrial Systems Corporation

Patent Trials and Appeals BoardJun 8, 2021

IPR2021-00301 (P.T.A.B. Jun. 8, 2021)

Trials@uspto.gov Paper No. 16 571-272-7822 Date: June 8, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ SYSTEM OF SYSTEMS, INC., Petitioner, v. AIR DYNAMICS INDUSTRIAL SYSTEMS, INC., Patent Owner. ____________ IPR2021-00301 Patent 8,733,186 B2 ____________ Before NATHAN A. ENGELS, ELIZABETH M. ROESEL, and MONICA S. ULLAGADDI, Administrative Patent Judges. ENGELS, Administrative Patent Judge. DECISION Settlement Prior to Institution of Trial 37 C.F.R. § 42.74 IPR2021-00301 Patent 8,733,186 B2 I. INTRODUCTION On June 2, 2021, with Board authorization, the parties filed a “Joint Motion to Dismiss” the petition in this proceeding. Paper 14 (“Mot.”). Along with the Joint Motion, the parties filed a copy of a “Settlement Agreement” that describes itself as “the sole and entire agreement of the parties.” Ex. 1040 § 12. The parties assert that “the parties have resolved to end their dispute” and that, in the related district court litigation, “dismissal with prejudice was ordered by the court in that action on May 27, 2021.” Mot. § II(A). The parties also assert that “[t]here are no other agreements, oral or written, between the Parties made in connection with, or in contemplation of, the termination of this proceeding.” Mot. § I. The parties also filed a Joint Motion to treat their Settlement Agreement as business confidential information and to maintain the Settlement Agreement separate from the public file under 37 C.F.R. § 42.74(c). Paper 15. II. DISCUSSION On December 7, 2020, Petitioner filed a Petition requesting an inter partes review of claims 1–15 of U.S. Patent No. 8,733,186 (Ex. 1001). Paper 2. This proceeding is still in its preliminary stages. We have not entered a decision on whether to institute an inter partes review for the proceeding. In view of the early stage of this proceeding and the settlement between the parties, we determine that good cause exists to dismiss the petition and terminate this proceeding with respect to the parties. We also have reviewed the Settlement Agreement, and we determine that the Settlement Agreement contains business confidential information regarding IPR2021-00301 Patent 8,733,186 B2 the terms of the settlement and that good cause exists to treat the settlement agreement as business confidential information under 37 C.F.R. § 42.74(c). This Order does not constitute a final written decision pursuant to 35 U.S.C. § 318(a). III. ORDER In consideration of the foregoing, it is hereby: ORDERED that the parties’ Joint Request (Paper 15) to treat the Settlement Agreement (Exhibit 1040) as business confidential information under 37 C.F.R. § 42.74(c) is granted, and the Settlement Agreement shall be kept separate from the files of Patent 8,733,186 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); and FURTHER ORDERED that the parties’ Joint Motion to Dismiss (Paper 14) is granted, and the Petition is dismissed and the proceeding is terminated with respect to Petitioner and Patent Owner. IPR2021-00301 Patent 8,733,186 B2 PETITIONER: Thomas H. Kramer O’KELLY & ERNST, LLC tkramer@oelegal.com Gerard M. O’Rourke, Esq. O’ROURKE LAW OFFICE, LLC gorourke@orourkefirm.com PATENT OWNER: Kenneth M. Fagin Vincent M. DeLuca POTOMAC LAW GROUP, PLLC kfagin@potomaclaw.com vdeluca@potomaclaw.com