Koninklijke Philips N.V.

Patent Trials and Appeals Board

Nov 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