Prova Group Inc.

Patent Trials and Appeals BoardDec 6, 2021

IPR2021-00382 (P.T.A.B. Dec. 6, 2021)

Trials@uspto.gov Paper 18 571-272-7822 Entered: December 6, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ TEXTILE RENTAL SERVICES ASSOCIATION, Petitioner, v. PROVA GROUP INC., Patent Owner. ____________ IPR2021-00382 Patent 8,234,185 B2 ____________ Before MICHAEL R. ZECHER, KARA L. SZPONDOWSKI, and JASON W. MELVIN, Administrative Patent Judges. ZECHER, Administrative Patent Judge. TERMINATION Due to Settlement After Institution of Trial 35 U.S.C. § 317; 37 C.F.R. § 42.74 IPR2021-00382 Patent 8,234,185 B2 2 I. DISCUSSION On November 29, 2021, with our authorization via email, Petitioner, Textile Rental Services Association (“TRSA”), and Patent Owner, Prova Group Inc., jointly filed the following: (1) a “Joint Motion to Terminate Inter Partes Review [IPR]” (Paper 16, “Mot.”)1; (2) a true copy of the parties’ settlement agreement (Ex. 2009); and (3) a “Joint Request to Keep Separate Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c)” (Paper 17). For the following reasons, we grant the parties’ “Joint Motion to Terminate IPR,” as well as the parties’ joint request to file their settlement agreement as business confidential information and keep it separate from the file of the involved patent. On August 11, 2021, we entered a decision instituting an IPR of claims 1–21 of U.S. Patent No. 8,234,185 B2 (Ex. 1001, “the ’185 patent”). Paper 8. The trial, however, is still in an early stage because the parties have not completed substantive briefing and we have not yet decided the merits. In the “Joint Motion to Terminate IPR,” the parties state that “[t]ermination of this proceeding with respect to all parties is proper” because the trial “is still in an early stage,” “all parties request termination and the Board has not yet decided the merits of the proceeding,” terminating this proceeding is appropriate when the only Petitioner—TRSA—supports termination, and “[TRSA] will not be participating further in this proceeding.” Mot. 2–3. The parties represent that the defamation lawsuit involving the parties is in the process of being dismissed concurrently with 1 The parties’ “Joint Motion to Terminate” does not include page numbers. We consider the Title page as page 1 and then proceed from there in numerical order. IPR2021-00382 Patent 8,234,185 B2 3 this proceeding. Id. at 3. The parties also represent that Exhibit 2009 is a true copy of the parties’ settlement agreement that resolves their disputes involving the ’185 patent, and “[t]here are no other agreements, oral or written, between the parties made in connection with, or in contemplation of, the termination of [this] proceeding.” Id. at 2. Under these particular circumstances, we determine that it is appropriate to terminate the trial without rendering a final written decision. See 37 C.F.R. § 42.72. We also have reviewed the true copy of the parties’ settlement agreement (Ex. 2009), and we determine that good cause exists to treat this settlement agreement as business confidential information and keep it separate from the file of the ’185 patent. See 35 U.S.C. § 317(b); 37 C.F.R. § 42.74(c). II. ORDER In consideration of the foregoing, it is hereby: ORDERED that the parties’ joint request to file their settlement agreement as business confidential information and keep it separate from the file of the ’185 patent is granted; FURTHER ORDERED that Exhibit 2009 shall remain business confidential information, and shall be kept separate from the file of the ’185 patent; and FURTHER ORDERED that the parties’ “Joint Motion to Terminate IPR” filed pursuant to 35 U.S.C. 317(a) and 37 C.F.R. § 42.74 is granted. IPR2021-00382 Patent 8,234,185 B2 4 For PETITIONER: Ruffin B. Cordell Adam R. Shartzer Kenton W. Freeman, Jr. (admitted pro hac vice) FISH & RICHARDSON P.C. cordell@fr.com shartzer@fr.com kfreeman@fr.com For PATENT OWNER: Christopher J. Rourk Wasif Qureshi JACKSON WALKER LLP crourk@jw.com wqureshi@jw.com