ASK Chemicals LLC

Patent Trials and Appeals BoardSep 1, 2020

IPR2020-01230 (P.T.A.B. Sep. 1, 2020)

Trials@uspto.gov Paper 7 Tel: 571-272-7822 Date: September 1, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD NOVIS WORKS, LLC, Petitioner, v. ASK CHEMICALS LLC, Patent Owner. IPR2020-01230 Patent 6,686,402 B2 Before JON B. TORNQUIST, CHRISTOPHER M. KAISER, and MONTÉ T. SQUIRE, Administrative Patent Judges. KAISER, Administrative Patent Judge. DECISION Settlement Prior to Institution of Trial 37 C.F.R. § 42.74 IPR2020-01230 Patent 6,686,402 B2 2 INTRODUCTION Novis Works, LLC (“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting an inter partes review of claims 7–12 of U.S. Patent No. 6,686,402 B2 (Ex. 1001, “the ’402 patent”). ASK Chemicals LLC (“Patent Owner”) has not yet filed a Preliminary Response. With our authorization, Petitioner and Patent Owner jointly filed a motion to terminate this proceeding due to the settlement of their dispute. Paper 6. The parties also request that we treat their settlement agreement as business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Id. DISCUSSION This proceeding is still in its very earliest stages. Petitioner filed its Petition on July 10, 2020, and Patent Owner has not yet filed a Preliminary Response, which is due on October 22, 2020. Pet. 68; Paper 3, 1. Accordingly, we have not yet reached a decision on whether to institute inter partes review of the ’402 patent, much less reached a decision on the merits of Petitioner’s challenges to claims 7–12 of the ’402 patent. In the joint motion, the parties indicate that they “have entered into a settlement agreement and jointly seek termination of the proceeding[].” Paper 6, 4. By reference to our email authorizing the joint motion to terminate, the parties certify that “there are no collateral agreements or understandings made in connection with, or in contemplation of, the termination of the inter partes review.” Id. at Ex. B. Under these particular circumstances, we determine that it is appropriate to terminate this proceeding. See 37 C.F.R. § 42.74. IPR2020-01230 Patent 6,686,402 B2 3 We have reviewed the settlement agreement the parties filed, Ex. 2001, and we determine that good cause exists to treat it as business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). ORDER It is hereby ORDERED that the parties’ joint request to treat the settlement agreement as business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is granted; FURTHER ORDERED that the parties’ joint motion to terminate is granted; and FURTHER ORDERED that this proceeding is terminated. IPR2020-01230 Patent 6,686,402 B2 4 PETITIONER: Howard L. Wernow Joseph A. Sebolt Joseph L. Powell SAND, SEBOLT & WERNOW CO., LPA Howard.Wernow@sswip.com Joe.Sebolt@sswip.com Joseph.Powell@sswip.com Richard B. Megley, Jr. LEE SHEIKH MEGLEY & HAAN rmegley@leesheikh.com PATENT OWNER: Jeffrey S. Standley Melissa A. Rogers McCurdy Eric M. Gayan STANDLEY LAW GROUP LLP jstandley@standleyllp.com mmccurdy@standleyllp.com egayan@standleyllp.com