Pepscan Systems B.V.

Patent Trials and Appeals Board

Dec 14, 2020

IPR2020-01569 (P.T.A.B. Dec. 14, 2020)

Trials@uspto.gov Paper 12
571-272-7822 Entered: December 14, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

BICYCLERD LIMITED,
Petitioner,
v.
PEPSCAN SYSTEMS B.V.,
Patent Owner.

IPR2020-01569 (Patent 8,742,070 B2)
IPR2020-01626 (Patent 8,748,105 B2)1

Before ZHENYU YANG, CHRISTOPHER G. PAULRAJ, and
CYNTHIA M. HARDMAN, Administrative Patent Judges.
YANG, Administrative Patent Judge.

DECISION
Settlement Prior to Institution of Trial
37 C.F.R. § 42.74

1 This Order applies to both proceedings. The parties are not authorized to
use this style heading for any subsequent papers.
IPR2020-01569 (Patent 8,742,070 B2)
IPR2020-01626 (Patent 8,748,105 B2)

2

I. INTRODUCTION
With the Board’s authorization, Petitioner and Patent Owner
(collectively referred to as “the Parties”) filed a Joint Motion to Terminate in
each of the above-identified proceedings due to settlement. IPR2020-01569,
Paper 10; IPR2020-01626, Paper 9 (“Joint Motion”). In support of the Joint
Motion, the Parties filed a corresponding Confidential Settlement and
collateral agreement (IPR202-01569, Ex. 1034; IPR2020-01626, Ex. 1034
(“Settlement Agreement”)), as well as a corresponding Joint Request to
Treat Agreement as Business Confidential pursuant to 37 C.F.R. § 42.74(c)
(IPR2020-01569, Paper 11; IPR2020-01626, Paper 10 (“Joint Request”)).
II. DISCUSSION
In the Joint Motion, the Parties represent that they have reached an
agreement to jointly seek termination of the above-identified inter partes
review proceedings, and that the filed copy of the Settlement Agreement and
collateral agreement is a true copy. Joint Motion 1. The Parties further
represent that their Settlement Agreement resolves all currently pending
Patent Office proceedings between the Parties involving Patents
8,742,070 B2 and 8,748,105 B2. Id. at 2. The Parties further represent that
there are no related District Court proceedings. Id.
These proceedings are at an early stage, and we have not yet decided
whether to institute a trial in the proceedings. In view of the early stage of
the proceedings and the settlement between the Parties, we determine that
good cause exists to terminate the proceedings 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
files of the respective patents involved in these inter partes proceedings.
IPR2020-01569 (Patent 8,742,070 B2)
IPR2020-01626 (Patent 8,748,105 B2)

3

Joint Request 1. After reviewing the Settlement Agreement, we find that it
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 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 Terminate is granted, and each of
the above-identified proceedings is terminated; and
FURTHER ORDERED that the Joint Request to Treat the Settlement
Agreement as Business Confidential is granted, and the Settlement
Agreement shall be kept separate from the files of Patents 8,742,070 B2 and
8,748,105 B2, and 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).

IPR2020-01569 (Patent 8,742,070 B2)
IPR2020-01626 (Patent 8,748,105 B2)

4

PETITIONER:
Blaine M. Hackman
Katherine A. Helm
Vi T. Tran
DECHERT LLP
blaine.hackman@dechert.com
khelm@dechert.com
vi.tran@dechert.com

PATENT OWNER:
Stephen B. Maebius
Daniel R. Shelton
FOLEY & LARDNER LLP
smaebius@foley.com
dshelton@foley.com