Koninklijke Philips N.V.

Patent Trials and Appeals BoardNov 17, 2020

IPR2020-00945 (P.T.A.B. Nov. 17, 2020)

Trials@uspto.gov Paper 10 571-272-7822 Date: November 17, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD BISSELL HOMECARE, INC., Petitioner, v. KONINKLIJKE PHILIPS N.V., Patent Owner. IPR2020-00945 Patent 9,173,536 B2 Before PATRICK R. SCANLON, FRANCES L. IPPOLITO, and CHRISTOPHER G. PAULRAJ, Administrative Patent Judges. PAULRAJ, Administrative Patent Judge. DECISION Settlement Prior to Institution of Trial 37 C.F.R. § 42.74 IPR2020-00945 Patent 9,173,536 B2 2 I. INTRODUCTION With the Board’s authorization, Petitioner and Patent Owner (collectively “the Parties”) filed a Joint Motion to Dismiss this proceeding due to settlement. Paper 7 (“Joint Motion”). In support of the Joint Motion, the Parties filed a copy of a Settlement and License Agreement (Ex. 1028 (“Settlement Agreement”)), as well as a Joint Request to File a Settlement Agreement as Business Confidential Information pursuant to 37 C.F.R. § 42.74(c) (Paper 8 (“Joint Request”)). II. DISCUSSION In the Joint Motion, the Parties represent that they have reached an agreement that “completely resolves all pending controversies between the Patent Owner and the Petitioner concerning the ’536 patent.” Joint Motion 1. The Parties further represent that the filed copy of the Settlement Agreement is a true copy, and “that there are no other agreements or understandings, oral or written, between them, including any collateral agreements, made in connection with, or in contemplation of, the dismissal of the present proceeding.” Id. 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 this proceeding with respect to the Parties. In the Joint Request, the Parties request that the Settlement Agreement be treated as business confidential information and be kept separate from the file of the patent involved in this proceeding. Joint Request 1. After IPR2020-00945 Patent 9,173,536 B2 3 reviewing the Settlement Agreement between Petitioner and Patent Owner, we find that the Settlement Agreement contains confidential business information regarding the terms of settlement. We determine that good cause exists to treat the Settlement Agreement between Petitioner and Patent Owner 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). III. ORDER Accordingly, for the reasons discussed above, it is: ORDERED that the Joint Motion to Dismiss is granted, and the petition in IPR2020-00945 is dismissed and this proceeding is terminated; and FURTHER ORDERED that the Joint Request to File a Settlement Agreement as Business Confidential Information is granted, and the Settlement Agreement shall be kept separate from the file of Patent 9,173,536 B2, and be 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). IPR2020-00945 Patent 9,173,536 B2 4 FOR PETITIONER: Neil Jones Ashley Summer neil.jones@nelsonmullins.com ashley.summer@nelsonmullins.com FOR PATENT OWNER: Frank Decosta Joshua Goldberg Daniel Chung frank.decosta@finnegan.com joshua.goldberg@finnegan.com daniel.chung@finnegan.com