Hyper Ice, Inc.

Patent Trials and Appeals Board

Aug 4, 2021

PGR2021-00057 (P.T.A.B. Aug. 4, 2021)

Trials@uspto.gov Paper 12
571.272.7822 Date: August 4, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

THERAGUN, INC.,
Petitioner,

v.

HYPER ICE, INC.
Patent Owner.
____________

PGR2021-00057
Patent 10,729,614 B2
____________

Before KEVIN W. CHERRY, JAMES A. WORTH, and
JAMES J. MAYBERRY, Administrative Patent Judges.

WORTH, Administrative Patent Judge.

TERMINATION
Settlement Before Institution of Trial
Granting Joint Motion to Treat Settlement Agreement
as Confidential Business Information and to Keep Separate from the File
37 C.F.R. § 42.74

PGR2021-00057
Patent 10,729,614 B2

2
On February 23, 2021, Theragun, Inc. (“Petitioner”) filed a petition
for post-grant review of U.S. Patent 10,729,614 B2 (“the ’614 patent,”
Ex. 1001). Paper 2. On June 8, 2021, Hyper Ice, Inc. (“Patent Owner”)
filed a preliminary response. Paper 7. The Board has not instituted trial in
this proceeding, and no final decision has been rendered by the Board in this
proceeding.
The parties have now filed a Joint Motion to Terminate Post-Grant
Review (Paper 10, “Joint Motion to Terminate”) and a Joint Request to Keep
Separate Pursuant to 37 C.F.R. § 42.74(c) (Paper 11, “Joint Motion to Keep
Separate”).
Section 327(b) of Title 35 U.S.C. provides:
Any agreement or understanding between the patent owner and
a petitioner, including any collateral agreements referred to in
such agreement or understanding, made in connection with, or in
contemplation of, the termination of a post-grant review under
this section shall be in writing, and a true copy of such agreement
or understanding shall be filed in the Office before the
termination of the post-grant review as between the parties.
Id.
The Joint Motion to Terminate represents as follows:
As required under 37 C.F.R. § 42.74(b), a true copy of the
settlement agreement that resolves the dispute in this post grant
review is being filed with this motion as a confidential Exhibit
1020. There are no other agreements, oral or written, between
the parties that were made in connection with, or in
contemplation of, the requested dismissal.
Joint Motion to Terminate, 1. The Joint Motion to Terminate further
represents that the lawsuit between Petitioner and Patent Owner involving
the ’614 patent is in the process of being dismissed concurrently with this
PGR2021-00057
Patent 10,729,614 B2

3
post grant review, and that the parties do not contemplate any further
litigation or proceeding involving the ’614 patent. Id. at 2.
Therefore, based on the representation of the parties in the Joint
Motion to Terminate, there are no other agreements between the parties, the
parties understand Exhibit 1020 to have resolved their dispute, and the
parties are seeking termination of the instant proceeding. We determine that
the Joint Motion to Terminate and Exhibit 1020 satisfy the requirements of
35 U.S.C. § 327(b). We determine that termination of the proceeding, as
requested by the parties, is in the interest of the efficient administration of
justice.
Generally, the Board expects that a proceeding will terminate after the
filing of a settlement agreement, unless the Board has already decided the
merits of the proceeding. See 35 U.S.C. § 327(a) (“A post-grant 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.”); 37 C.F.R. § 42.72 (“The Board may terminate a
trial without rendering a final written decision, where appropriate, including
. . . pursuant to a joint request under 35 U.S.C. 327(a)”). As noted above,
the Board has not yet rendered a final decision here. Thus, we grant the
Joint Motion to Terminate the proceeding.
This Decision does not constitute a final written decision pursuant to
35 U.S.C. § 328(a).
The parties also move that the Settlement Agreement be treated as
confidential business information. See Joint Motion to Keep Separate, 1.
Based on our examination of Exhibit 1020, we determine that the Settlement
PGR2021-00057
Patent 10,729,614 B2

4
Agreement contains confidential business information. The request to keep
the agreement separate is granted.

Accordingly, it is:
ORDERED that the Joint Motion to Keep Separate is granted, and the
settlement agreement (Ex. 1020) shall be kept separate from the public files
of the ’614 patent, and made available only to Federal Government agencies
on written request, or to any person on a showing of good cause, under 35
U.S.C. § 327(b) and 37 C.F.R. § 42.74(c); and
FURTHER ORDERED that the Joint Motion to Terminate this
proceeding is granted, and this proceeding is hereby terminated under
35 U.S.C. § 327(a) and 37 C.F.R. § 42.72.

PGR2021-00057
Patent 10,729,614 B2

5

For PETITIONER:

Gregory Cordrey
gcordrey@jmbm.com

Rod Berman
rberman@jmbm.com

Brennan Swain
bswain@jmbm.com

For PATENT OWNER:

Joshua Curry
Josh.curry@lewisbrisbois.com

Lawrence LaPorte
Lawrence.laporte@lewisbrisbois.com