SAINT-GOBAIN CERAMICS & PLASTICS, INC.

Patent Trials and Appeals Board

Jun 23, 2020

IPR2019-01534 (P.T.A.B. Jun. 23, 2020)

Trials@uspto.gov Paper 13
571-272-7822 Entered: June 23, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

II-VI INCORPORATED,
Petitioner,

v.

SAINT-GOBAIN CERAMICS & PLASTICS, INC.,
Patent Owner.
____________

IPR2019-01534
Patent 9,926,645 B2
____________

Before GRACE KARAFFA OBERMANN, JEFFREY W. ABRAHAM, and
ELIZABETH M. ROESEL, Administrative Patent Judges.

ABRAHAM, Administrative Patent Judge.

TERMINATION
Due to Settlement After Institution of Trial and
Granting Joint Request to Treat Settlement Agreement as
Business Confidential Information
35 U.S.C. § 317; 37 C.F.R. § 42.74

IPR2019-01534
Patent 9,926,645 B2

2

I. INTRODUCTION
On June 11, 2020, Petitioner and Patent Owner (collectively “the
Parties”) filed a Joint Motion to Terminate the above-identified proceeding
(“Joint Motion”). Paper 12. The Parties also filed an Intellectual Property
License and Settlement Agreement (Exhibit 1027, “Settlement Agreement”)
and requested that the Settlement Agreement be treated as business
confidential information and be kept separate. Joint Motion 1, 3. We
authorized the filing of these papers in an email sent on June 3, 2020. See
Joint Motion 2.
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,
that the filed copy of the Settlement Agreement is a true copy, and there are
no other written or oral agreements. Joint Motion 1–3. The Parties also
represent that their settlement agreement resolves all currently pending
Patent Office and District Court proceedings between the Parties involving
US Patent No. 9,926,645 B2. Id. at 1, 3.
We instituted a trial on the above-identified proceeding on March 9,
2020. Paper 6. Given the parties’ joint request, we must terminate the
proceeding with respect to Petitioner unless we have decided the merits of
IPR2019-01534
Patent 9,926,645 B2

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the proceeding. See 35 U.S.C. § 317(a). 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 the termination of the
proceeding is appropriate. Under these circumstances, we determine that the
proceeding should be terminated with respect to the Parties.
The Parties also requested that the Settlement Agreement be treated as
business confidential information and be kept separate from the file of
US Patent No. 9,926,645 B2. Joint Request 1, 3. After reviewing the
Settlement Agreement between the Parties, 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 the Parties 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
IPR2019-01534 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

IPR2019-01534
Patent 9,926,645 B2

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FURTHER ORDERED that the Joint Request to File Settlement
Agreement as Business Confidential Information is granted, and the
Settlement Agreement shall be kept separate from the file of US Patent No.
9,926,645 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).

IPR2019-01534
Patent 9,926,645 B2

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For PETITIONER:
Kent E. Baldauf, Jr.
Ryan Miller
THE WEBB LAW FIRM
kbaldaufjr@webblaw.com
rmiller@webblaw.com

For PATENT OWNER:
Jeffrey Abel
Ethan SchiLlinger
ABEL SCHILLINGER, LLP
jabel@abel-ip.com
Eschillinger@abel-ip.com