Interactive Play Devices LLC

Patent Trials and Appeals Board

Jun 15, 2021

IPR2021-00315 (P.T.A.B. Jun. 15, 2021)

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