Interactive Play Devices LLCDownload PDFPatent Trials and Appeals BoardJun 15, 2021IPR2021-00315 (P.T.A.B. Jun. 15, 2021) Copy Citation Trials@uspto.gov Paper 10 Tel: 571-272-7822 Entered: June 15, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ SPIN MASTER INC., Petitioner, v. INTERACTIVE PLAY DEVICES LLC, Patent Owner. ____________ IPR2021-00315 Patent 7,018,265 B2 ____________ Before SCOTT A. DANIELS, NEIL T. POWELL, and JOHN R. KENNY, Administrative Patent Judges. DANIELS, Administrative Patent Judge. DECISION Settlement Prior to Institution of Trial 37 C.F.R. § 42.74 IPR2021-00315 Patent 7,018,265 B2 2 On June 2, 2021, with Board authorization, Petitioner and Patent Owner (collectively “the Parties”) filed a Joint Motion to Terminate the above-captioned proceeding. Paper 8 (“Joint Motion”). Along with the Joint Motion, the Parties filed a copy of a Confidential Agreement (Ex. 1039), as well as a Joint Request to treat the Confidential Agreement as business confidential information (Paper 9, “Joint Request”). See 37 C.F.R. § 42.74(c) (a party to a settlement may request that the settlement agreement be treated as business confidential and be kept separate from the patent file). In the Joint Motion, the Parties represent that they have reached an agreement to jointly seek termination of the above-identified inter partes review proceeding, and that the filed copy of the Confidential Agreement is a true and accurate copy of their agreement. Joint Motion 2. The Parties further represent that “Petitioner has not filed any further Petition for Inter Partes Review” related to the above-identified patent at issue and that the parallel District Court proceeding has been dismissed. Id. at 2–4. This proceeding is at an early stage, and we have not yet decided whether to institute a trial in the proceeding. In view of the early stage of the proceeding and the settlement between the Parties, we determine that good cause exists to dismiss the petition and terminate the proceeding with respect to the Parties. This Order does not constitute a final written decision pursuant to 35 U.S.C. § 318(a). The parties also ask that the Confidential Agreement be treated as business confidential information and be kept separate from the file of the challenged patent. Joint Request 1. We determine that it is appropriate to treat the Confidential Agreement as business confidential information, and IPR2021-00315 Patent 7,018,265 B2 3 to keep that document separate from the file of the challenged patent, pursuant to 37 C.F.R. § 42.74(c). For the foregoing reasons, it is: ORDERED that the Joint Motion is granted and this proceeding is terminated with respect to Petitioner and Patent Owner; FURTHER ORDERED that the Joint Request that the Confidential Agreement (Ex. 1039) be treated as business confidential information, to be kept separate from the patent file, is granted in this proceeding. IPR2021-00315 Patent 7,018,265 B2 4 PETITIONER: Jennifer C. Bailey Callie Pendergrass ERISE IP, P.A. Jennifer.Bailey@EriseIP.com Callie.Pendergrass@EriseIP.com PATENT OWNER: Jerry C. Liu HILL, KERTCHER & WHARTON, LLP jl@hkw-law.com Copy with citationCopy as parenthetical citation