Hammond Development International, Inc.

Patent Trials and Appeals BoardJun 22, 2021

IPR2020-01067 (P.T.A.B. Jun. 22, 2021)

Trials@uspto.gov Paper 19 571-272-7822 Date: June 22, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD AMAZON.COM, INC., Petitioner, v. HAMMOND DEVELOPMENT INTERNATIONAL, INC., Patent Owner. IPR2020-01067 Patent 10,270,816 B1 Before MICHELLE N. WORMMEESTER, AMBER L. HAGY, and KRISTI L. R. SAWERT, Administrative Patent Judges. SAWERT, Administrative Patent Judge. TERMINATION Due to Settlement After Institution of Trial 35 U.S.C. § 317; 37 C.F.R. § 42.74 IPR2020-01067 Patent 10,270,816 B1 2 I. INTRODUCTION On our authorization (Ex. 3001), the parties filed a Joint Motion to terminate this proceeding under 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74. Paper 18 (“Motion” or “Mot.”). The parties also filed what they indicate are complete copies of a Covenant Not to Sue and Release of Claims (Ex. 2027, “Covenant”), and a Stipulation and Joint Motion to Dismiss Action (Ex. 2028, “Stipulation”) in the parallel district court proceeding, Hammond Development Int’l, Inc. v. Amazon.com, Inc., Case No. 1:20-CV-00342- ADA, in the U.S. District Court for the Western District of Texas. For the reasons discussed below, the Motion is granted. II. ANALYSIS We have not decided the merits of this proceeding. The parties indicate that they have settled their disputes regarding U.S. Patent No. 10,270,816 B1 (“the ’816 patent”). Mot. 2. Specifically, the parties represent that “[t]he Covenant and the Stipulation resolve all disputes between the parties relating to the ’816 patent,” and that “there are no other agreements, oral or written, between the parties made in connection with, or in contemplation of, the termination of the proceeding.” Id. at 2–3. The parties also represent that “[b]oth Petitioner and Patent Owner support termination of the proceeding.” Id. at 3. Under these circumstances, we determine that it is appropriate to terminate this proceeding. See 37 C.F.R. § 42.72. IPR2020-01067 Patent 10,270,816 B1 3 III. ORDER It is hereby: ORDERED that the Joint Motion to terminate is granted; and FURTHER ORDERED that this proceeding is terminated as to all parties. IPR2020-01067 Patent 10,270,816 B1 4 FOR PETITIONER: Colin B. Heideman Joseph R. Re Jeremy A. Anapol Cheryl T. Burgess Christie R.W. Matthaei Daniel P. Hughes KNOBBE, MARTENS, OLSON & BEAR, LLP BoxSEAZNL1623LP1@knobbe.com FOR PATENT OWNER: Andrew J. Wright Brent N. Bumgardner NELSON BUMGARDNER ALBRITTON P.C. andrew@nbafirm.com brent@nbafirm.com DG-Hammond-IPR@nbafirm.com