Slingshot Printing LLC

Patent Trials and Appeals Board

Mar 29, 2021

IPR2020-01659 (P.T.A.B. Mar. 29, 2021)

Trials@uspto.gov Paper: 9
571.272.7822 Entered: March 29, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

HP INC.,
Petitioner,
v.
SLINGSHOT PRINTING LLC,
Patent Owner.
____________

IPR2020-01659
Patent 7,410,246 B2
____________

Before GARTH D. BAER, JOHN D. HAMANN, and
STACY B. MARGOLIES, Administrative Patent Judges.

MARGOLIES, Administrative Patent Judge.

TERMINATION
Settlement Prior to Institution of Trial
37 C.F.R. § 42.74
IPR2020-01659
Patent 7,410,246 B2

2
I. INTRODUCTION
With our prior authorization, HP Inc. and Slingshot Printing LLC
(collectively, “the Parties”) filed a Joint Motion to Terminate. Paper 7
(“Joint Motion”). In support of the Joint Motion, the Parties filed a
settlement agreement. Ex. 1009 (“Settlement Agreement”). The Parties also
filed a Joint Request to Treat Settlement Agreement as Business
Confidential Information. Paper 8 (“Joint Request”).
II. DISCUSSION
In the Joint Motion, the Parties state that they “have settled their
dispute and executed a settlement agreement to terminate this proceeding.”
Joint Motion 1. The parties further state that their “settlement agreement is
in writing, and a true and correct copy is being filed under 37 C.F.R.
§ 42.74(b),” and that “there are no other agreements, oral or written,
between the parties made in connection with, or in contemplation of, the
termination of this proceeding.” Id.
There are strong public policy reasons to favor settlement between the
parties to a proceeding. Office Patent Trial Practice Guide, 84 Fed. Reg.
64,280 (Nov. 21, 2019). This proceeding is in its preliminary stage and we
have not yet decided whether to institute an inter partes review. In view of
the early stage in this proceeding and the settlement agreement between the
Parties, we determine that good cause exists and that it is appropriate to
terminate this proceeding.
In the Joint Request, the Parties jointly request that the Settlement
Agreement “(i) be treated as business confidential information, (ii) be
maintained separate from the publicly available file of the involved patent,
and (iii) shall be made available only to Federal Government agencies on
IPR2020-01659
Patent 7,410,246 B2

3
written request, or to persons showing good cause on written request,
pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. §[]42.74(c).” Joint Request 1.
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 (Ex. 1009) as business
confidential information, and, therefore, grant the Joint Request. See
35 U.S.C. § 317(b); 37 C.F.R. § 42.74(c).
III. ORDER
Accordingly, it is
ORDERED that the Joint Motion to Terminate this proceeding is
GRANTED and the proceeding is hereby terminated; and
FURTHER ORDERED that the Joint Request to Treat Settlement
Agreement as Business Confidential Information is GRANTED.

IPR2020-01659
Patent 7,410,246 B2

4
For PETITIONER:

Barry Shelton
SHELTON COBURN LLP
bshelton@sheltoncoburn.com

Dion M. Bregman
MORGAN, LEWIS & BOCKIUS LLP
dion.bregman@morganlewis.com

For PATENT OWNER:

Michael A. Siem
Lynn A. Lehnert
GOLDBERG SEGALLA LLP
msiem@goldbergsegalla.com
llehnert@goldbergsegalla.com