Cambria Company LLC

Patent Trials and Appeals BoardAug 24, 2021

PGR2021-00010 (P.T.A.B. Aug. 24, 2021)

Trials@uspto.gov Paper No. 19 Tel: 571-272-7822 Entered: August 24, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ COSENTINO S.A.U. and C & C NORTH AMERICA INC., Petitioner, v. CAMBRIA COMPANY LLC, Patent Owner. _______________ IPR2021-00214 (Patent 10,252,440 B2) IPR2021-00215 (Patent 9,289,923 B1) IPR2021-00216 (Patent 10,195,762 B2) PGR2021-00010 (Patent 10,773,418 B2)1 _______________ Before KRISTINA M. KALAN, CHRISTOPHER M. KAISER, AVELYN M. ROSS, Administrative Patent Judges. KALAN, Administrative Patent Judge. TERMINATION Due to Settlement After Institution of Trial and Granting Joint Request to Treat Settlement Agreement as Business Confidential Information 35 U.S.C. § 317; 35 U.S.C. § 327; 37 C.F.R. § 42.74 1 This Order addresses issues that are the same in each of the identified cases. We exercise our discretion to issue one Order to be filed in each case. The parties are not authorized to use this style heading in subsequent papers. IPR2021-00214 (Patent 10,252,440 B2) IPR2021-00215 (Patent 9,289,923 B1) IPR2021-00216 (Patent 10,195,762 B2) PGR2021-00010 (Patent 10,773,418 B2) 2 I. INTRODUCTION With the Board’s authorization, Petitioner and Patent Owner (collectively, “the Parties”) filed a Joint Motion to Terminate in each of the above-captioned proceedings due to settlement. Paper 17 (“Joint Motion”).2 Along with the Joint Motion, the Parties filed a copy of their Patent License Agreement (Ex. 2022, “Settlement Agreement”), as well as a Joint Request that the Settlement Agreement be treated as business confidential information and kept separate from the files of the patents involved in the above-captioned proceedings. Paper 18 (“Joint Request”). II. DISCUSSION In the Joint Motion, the Parties represent that the Settlement Agreement resolves their disputes involving the patents at issue in the above-captioned proceedings. Joint Motion 1. The Parties also represent that they have filed a true copy of the Settlement Agreement made in connection with, or in contemplation of, the termination of the above- captioned proceedings. Id. at 2. The Settlement Agreement states that it “embod[ies] the entire understanding of the Parties.” Settlement Agreement 14. The Board generally expects that a case “will terminate after the filing of a settlement agreement, unless the Board has already decided the merits of the proceeding.” Consolidated Trial Practice Guide, 86 (Nov. 2019)3; see 2 The papers and exhibits filed in the above-captioned proceedings are substantively the same. Therefore, we cite to the record in IPR2021-00214, unless otherwise noted. 3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. IPR2021-00214 (Patent 10,252,440 B2) IPR2021-00215 (Patent 9,289,923 B1) IPR2021-00216 (Patent 10,195,762 B2) PGR2021-00010 (Patent 10,773,418 B2) 3 35 U.S.C. §§ 317(a), 327(a); 37 C.F.R. § 42.72. Here, the Board has not decided the merits of the above-captioned proceedings. Under these circumstances, we determine that good cause exists to terminate the above- captioned proceedings with respect to the Parties. In the Joint Request, the Parties request that the Settlement Agreement be treated as business confidential information and kept separate from the files of the patents involved in the above-captioned proceedings. Joint Request 1. After reviewing the Settlement Agreement, we find that it contains confidential business information regarding the terms of settlement. Thus, good cause exists to treat the Settlement Agreement as business confidential information pursuant to 37 C.F.R. § 42.74(c). This Order does not constitute a final written decision pursuant to 35 U.S.C. §§ 318(a), 328(a). III. ORDER Accordingly, it is: ORDERED that the Joint Request to treat the Settlement Agreement as business confidential information in each of the above-captioned proceedings is granted, and the Settlement Agreement shall be kept separate from the files of Patent Nos. 10,252,440 B2, 9,289,923 B1, 10,195,762 B2, and 10,773,418 B2, and made available only to Federal Government agencies on written request, or to any person on a showing of good cause, pursuant to 37 C.F.R. § 42.74(c); and FURTHER ORDERED that the Joint Motion to Terminate filed in each of the above-captioned proceedings is granted, and IPR2021-00214, IPR2021-00214 (Patent 10,252,440 B2) IPR2021-00215 (Patent 9,289,923 B1) IPR2021-00216 (Patent 10,195,762 B2) PGR2021-00010 (Patent 10,773,418 B2) 4 IPR2021-00215, IPR2021-00216, and PGR2021-00010 are each terminated with respect to Petitioner and Patent Owner. IPR2021-00214 (Patent 10,252,440 B2) IPR2021-00215 (Patent 9,289,923 B1) IPR2021-00216 (Patent 10,195,762 B2) PGR2021-00010 (Patent 10,773,418 B2) 5 For PETITIONER: Jeffrey C. Totten Jennifer H. Roscetti Sydney R. Kestle Anthony J. Berlenbach Brooke M. Wilner FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP jeffrey.totten@finnegan.com jennifer.roscetti@finnegan.com sydney.kestle@finnegan.com anthony.berlenbach@finnegan.com brooke.wilner@finnegan.com For PATENT OWNER: Katherine Vidal Louis Campbell WINSTON & STRAWN LLP kvidal@winston.com llcampbell@winston.com