Hyper Ice, Inc.

Patent Trials and Appeals Board

Apr 1, 2021

PGR2020-00089 (P.T.A.B. Apr. 1, 2021)

Trials@uspto.gov Paper 11
571.272.7822 Entered: April 1, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SHENZHEN SHUFANG INNOVATION TECHNOLOGY CO., LTD.;
NENZ ELECTRIC TECHNOLOGY (DONGGUAN) CO., LTD.;
SHENZHEN XINDE TECHNOLOGY CO., LTD.; PERFORMANCE
HEALTH SYSTEMS, LLC; and YONGKANG AIJIU INDUSTRIAL &
TRADE CO., LTD.,
Petitioner,

v.

HYPER ICE, INC.
Patent Owner.
____________

Case PGR2020-00089
Patent 10,561,574 B1
____________

Before LINDA E. HORNER, KALYAN K. DESHPANDE, and JAMES A.
WORTH, Administrative Patent Judges.

WORTH, Administrative Patent Judge.

TERMINATION
Due to Settlement Before Institution of Trial
Granting Joint Motion to Treat Settlement Agreement
Documents as Confidential Information
35 U.S.C. § 327(a); 37 C.F.R. § 42.72; 37 C.F.R. § 42.74(c)

PGR2020-00089
Patent 10,561,574 B1

2
On September 30, 2020, Shenzhen Shufang Innovation Technology
Co., Ltd., Nenz Electric Technology (Dongguan) Co., Ltd., Shenzhen Xinde
Technology Co., Ltd., Performance Health Systems, LLC, and Yongkang
Aijiu Industrial & Trade Co., Ltd. (collectively, “Petitioner”) filed a petition
for post-grant review of U.S. Patent 10,561,574 B1 (“the ’574 patent,”
Ex. 1001). Paper 2. On January 19, 2021, Hyper Ice, Inc. (“Patent Owner”)
filed a preliminary response. Paper 6. 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 of U.S. Patent No. 10,561,574 Under 37 C.F.R. § 42.72” (Paper 8,
“Joint Motion to Terminate”) and a Joint Motion to Keep Confidential and
Separate Under 35 U.S.C. § 327(b) and 37 C.F.R. § 42.74(c) (Paper 9, “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:
Petitioner, Shenzhen, et al., and Patent Owner Hyper Ice,
Inc., jointly request dismissal and termination for Post-Grant
Review (“PGR”) of U.S. Patent No. 10,561,574 (“the ’574
patent”) in PGR2020-00089. Petitioner and Patent Owner have
entered into a written confidential agreement that fully resolves
PGR2020-00089
Patent 10,561,574 B1

3
this matter. The Parties are concurrently filing a copy of the
agreement as Exhibit 1028 along with a request to treat it as
confidential business information pursuant to 35 U.S.C. § 327(b)
and 37 C.F.R. § 42.74. The undersigned represents that there are
no other agreements, oral or written, between the Parties made in
connection with, or in contemplation of, the termination of the
present proceeding and that Exhibit 1028 represents a true and
accurate copy of the confidential agreement between the Parties
that resolves the present proceeding.

Joint Motion to Terminate, 1. We understand “Shenzhen, et al.” to refer to
all of the Petitioner entities listed in the caption.1
Exhibit 1028 appears to include Settlement Agreements by the parties
to a parallel ITC proceeding,2 including Shenzhen Shufang E-Commerce
Co., Ltd. (Exhibit B), Performance Health Systems, LLC (Exhibit C), and
Yongkang Aijiu Industrial & Trade Co., Ltd. (Exhibit A); and Shenzhen
Xinde Technology Co., Ltd. (Exhibit E).
Although Shenzhen Shufang Innovation Tech. Co., Ltd. and Nenz
Electric Tech. (Dongguan) Co., Ltd. are not signatories to any of the exhibits
to Ex. 1028, Patent Owner has confirmed by email (see Ex. 3001), in

1 The Joint Motion to Terminate lists Zhejiang Red & Black Technology
Co., Ltd. as one of the Petitioner entities and indicates that it has settled its
dispute (see id.), although Zhejiang Red & Black Technology Co., Ltd. is
not listed as one of the Petitioner entities on the Petition. Compare Paper 8,
with Paper 2. We do not find this disparity a bar to resolution of this
proceeding by settlement because the caption for the Joint Motion to
Terminate includes all of the Petitioner entities on the Petition.
2 The Settlement Agreements state: “The Parties agree that this Agreement is
intended to be a full and final compromise, release, and settlement of any
and all disputes of any existing claims against one another related to the ITC
Investigation and the Accused Products.” Ex. 1028, Ex. A ¶ 6; Ex. B ¶ 8;
Ex. C ¶ 5; Ex. D ¶ 8; Ex. E ¶ 7.
PGR2020-00089
Patent 10,561,574 B1

4
response to an email inquiry from the Board, that Patent Owner does not
oppose withdrawal of the Petition for post-grant review by these Petitioner
entities. See Oxford Nanopore Techs., Inc. v. Pacific Biosciences of Calif.,
Inc., IPR2018-01795, Paper 8 at 3 (PTAB Mar. 26, 2019) (“Based on
e-mails to the Board seeking authorization to file this motion, we understand
that the sole agreement among the parties is that Patent Owner does not
oppose Petitioner’s request to withdraw its Petition.”)
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 1028 to have resolved their dispute, and the parties are
seeking termination of the instant proceeding. Joint Motion to Terminate, 1.
We determine that the Joint Motion to Terminate and Exhibit 1028,
along with the email representation of Patent Owner, 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,
PGR2020-00089
Patent 10,561,574 B1

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the Board has not yet rendered a final decision here. Thus, we grant the
Joint Motion to Terminate the proceedings.
This Decision does not constitute a final written decision pursuant to
35 U.S.C. § 328(a).
The parties also move that the Settlement Agreements be treated as
confidential information. Joint Motion to Keep Separate, 1. Based on our
examination of Exhibit 1028, we determine that the Settlement Agreements
contain confidential business information. The request to keep the
agreements separate is granted.

Accordingly, it is:
ORDERED that the Joint Motion to Treat the Settlement Agreements
(Ex. 1028) as confidential information is granted, and this agreement shall
be kept separate from the public files of the ’574 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.

PGR2020-00089
Patent 10,561,574 B1

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For PETITIONER:

Kevin Greenleaf
Scott W. Cummings
Kerisha Bowen
DENTONS US LLP
kevin.greenleaf@dentons.com
scott.cummings@dentons.com
kerisha.bowen@dentons.com

For PATENT OWNER:

Joshua Curry
Lawrence R. LaPorte
LEWIS BRISBOIS BISGAARD & SMITH LLP
josh.curry@lewisbrisbois.com
lawrence.laporte@lewisbrisbois.com