RSA Protective Technologies, LLC

Patent Trials and Appeals Board

Mar 16, 2021

IPR2020-01369 (P.T.A.B. Mar. 16, 2021)

Trials@uspto.gov Paper 15
571-272-7822 Date: March 16, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

AMERISTAR PERIMETER SECURITY USA INC., ASSA ABLOY INC.,
and ASSA ABLOY AB,
Petitioner,

v.

RSA PROTECTIVE TECHNOLOGIES, LLC,
Patent Owner.
____________

IPR2020-01369
Patent 8,215,865 B2

____________

Before KEN B. BARRETT, JOHN P. PINKERTON, and
JAMES J. MAYBERRY, Administrative Patent Judges.

MAYBERRY, Administrative Patent Judge.

TERMINATION
Due to Settlement After Institution of Trial
35 U.S.C. § 317; 37 C.F.R. § 42.74

IPR2020-01369
Patent 8,215,865 B2

2
I. INTRODUCTION
Petitioner and Patent Owner (collectively referred to as the “Parties”)
filed a Joint Motion to Terminate (“Joint Motion”) the above-identified
proceeding due to settlement. Paper 13. In support of the Joint Motion, the
Parties filed a Settlement Agreement and Release (“Settlement Agreement”).
Ex. 1049. The Parties further filed a Joint Request to Treat Settlement
Agreement as Business Confidential Information (“Joint Request”) pursuant
to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 14.

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 an
agreement to jointly seek termination of this inter partes review proceeding,
and that the filed copy of the Settlement Agreement is a true and complete
copy. Joint Motion 1. The Parties further represent that the Settlement
Agreement resolves all currently pending Patent Office and District Court
proceedings between the Parties involving the above-referenced patent. See
id at 4.
We instituted trial on the above-identified proceeding. Paper 11. 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
IPR2020-01369
Patent 8,215,865 B2

3
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 filed a Joint Request that the Settlement Agreement
be treated as business confidential information and be kept separate from the
file of the patent involved in this inter partes review proceeding. Paper 14,
1. After reviewing the Settlement Agreement between Petitioner and Patent
Owner, we find that the Settlement Agreement contains confidential
business information of the Parties regarding the terms of settlement.
Accordingly, 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 to Terminate is granted, and
IPR2020-01369 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 to Treat Settlement
Agreement as Business Confidential Information is granted, and the
Settlement Agreement (Exhibit 1049) shall be kept separate from the file of
U.S. Patent 8,215,865 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).
IPR2020-01369
Patent 8,215,865 B2

4
FOR PETITIONER:
W. Karl Renner
Thomas A. Rozylowicz
Christopher S. Marchese
Usman Khan
FISH & RICHARDSON P.C.
renner@fr.com
rozylowicz@fr.com
marchese@fr.com
khan@fr.com

FOR PATENT OWNER:

Joseph V. Saphia
Jessica H. Zafonte
HAUG PARTNERS LLP
jsaphia@haugpartners.com
jzafonte@haugpartners.com