World Source Enterprises, LLC

Patent Trials and Appeals BoardJun 11, 2021

IPR2020-00768 (P.T.A.B. Jun. 11, 2021)

Trials@uspto.gov Paper 46 571-272-7822 Entered: June 11, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ SOLVAY USA INC., Petitioner, v. WORLDSOURCE ENTERPRISES, LLC, ECO AGRO RESOURCES LLC, and ECO WORLD GROUP LLC, Patent Owner. ____________ IPR2020-00768 Patent 10,301,231 B2 ____________ Before KRISTINA M. KALAN, JEFFREY W. ABRAHAM, and SHELDON M. MCGEE, Administrative Patent Judges. ABRAHAM, Administrative Patent Judge. TERMINATION Due to Settlement After Institution of Trial and Granting Joint Request to Treat Settlement Agreement as Business Confidential Information 35 U.S.C. § 317; 37 C.F.R. § 42.74 IPR2020-00768 Patent 10,301,231 B2 2 I. INTRODUCTION On June 7, 2021, after receiving authorization from the Board, Petitioner and Patent Owner filed a Joint Motion to Terminate this proceeding (“Joint Motion”). Paper 42, 2. The parties also filed a copy of a Settlement Agreement (Ex. 1041, “Settlement Agreement”) and filed a Joint Request That the Settlement Agreement Be Treated as Business Confidential Information (Paper 43, “Joint Request”). II. DISCUSSION Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” It is also provided in 35 U.S.C. § 317(a) that if no petitioner remains in the inter partes review, the Office may terminate the review. In the Joint Motion, the Parties represent that they have reached a global settlement agreement that includes requesting termination of this inter partes review proceeding, and that the filed copy of the Settlement Agreement is a true and correct copy. Joint Motion 2–3. We instituted a trial in this proceeding on September 25, 2020. Paper 12. The oral hearing in this proceeding has not yet taken place, we have not yet decided the merits of the proceeding, and a final written decision has not been entered. Notwithstanding that the proceeding has moved beyond the preliminary stage, the Parties have shown adequately that the termination of the proceeding is appropriate. Under these circumstances, we determine that good cause exists to terminate the proceeding with respect to the Parties. The Parties also requested that the Settlement Agreement be treated as IPR2020-00768 Patent 10,301,231 B2 3 business confidential information and be kept separate from the file of U.S. Patent No. 10,301,231 B2. Joint Request 2. After reviewing the Settlement Agreement, 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 as business confidential information pursuant to 35 U.S.C. § 317(b) and 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 is granted, and IPR2020-00768 is terminated with respect to Petitioner and Patent Owner, pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72; and FURTHER ORDERED that the Joint Request is granted, and the Settlement Agreement shall be kept separate from the file of U.S. Patent No. 10,301,231 B2, and made available only to Federal Government agencies on written request, or to any person on a showing of good cause, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). IPR2020-00768 Patent 10,301,231 B2 4 For PETITIONER: Michael Franzinger Ching-Lee Fukuda Jason Greenhut SIDLEY AUSTIN mfranzinger@sidley.com clfukuda@sidley.com jgreenhut@sidley.com For PATENT OWNER: Thomas Schroeder BEN SCHROEDER LAW, PLLC ben@leak-schroeder.com David Wilkerson THE VAN WINKLE LAW FIRM dwilkerson@vwlawfirm.com