Smart Shooter, Ltd.

Patent Trials and Appeals Board

Mar 31, 2021

IPR2020-01420 (P.T.A.B. Mar. 31, 2021)

Trials@uspto.gov Paper 11
571-272-7822 Date: March 31, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

ISRAEL WEAPON INDUSTRIES (I.W.I) LTD.,
Petitioner,
v.
SMART SHOOTER, LTD.,
Patent Owner.

IPR2020-01420
Patent 10,097,764 B2

Before DEBRA K. STEPHENS, MELISSA A. HAAPALA, and
KRISTI L. R. SAWERT, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION
Settlement Prior to Institution of Trial
37 C.F.R. § 42.74
I. INTRODUCTION
On March 22, 2021, pursuant to the Board’s authorization, Israel
Weapon Industries (I.W.I) Ltd. (“Petitioner”) and Smart Shooter, Ltd.
(“Patent Owner”) (collectively, “the Parties”) filed a Joint Motion to
Terminate the Proceeding and Joint Request to Keep Papers Separate as
Business Confidential Information (Paper 10 (“Joint Motion”)). In support
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of the Joint Motion, the Parties filed a copy of a Notice of Mediation
Settlement and Motion for Entry of Judgement translated from Hebrew to
English (Ex. 1021 (“Settlement Agreement”)).
II. DISCUSSION
In the Joint Motion, the Parties state that they have “settled their
dispute concerning the ’764 Patent” and jointly request termination of the
inter partes review (Joint Motion 1, 3). The Parties state the Settlement
Agreement has been filed concurrently (id.).
The Parties assert “termination is proper” because:
[T]he Board has not yet “decided the merits of the proceeding”
[and] . . . the Board has not decided whether to institute inter
partes review;

[T]he Parties have not engaged in discovery in this proceeding;

No dispute remains between Patent Owner and . . . Petitioner
involving the ’764 Patent;

[N]o U.S. district-court litigation [is] pending with respect to the
’764 Patent; [and]

[T]ermination of the instant inter partes review at this early stage
. . . would save the Board significant administrative and judicial
resources
(id. at 3). The Parties attest that the Settlement Agreement is “a true and
correct copy of the document along with an English translation” (id. at 1
(citing Ex. 1021))1. The Parties further “represent that they have complied

1 The Parties state the “Settlement Agreement and translation [are]
accompanied by an affidavit of Dafna Baskin. The Parties agree that to the
extent there is any conflict between the English translation and the original
Hebrew language of the Confidential Settlement Agreement, the original
Hebrew language shall prevail” (Joint Motion 1, n. 1).
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with 37 C.F.R. § 42.74 . . . [and] that aside from the written agreement
concurrently filed with the Board there are no other agreements, oral or
written, between the parties and made in connection with, or in
contemplation of, the termination of the proceeding” (id. at 1–2).
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) (Available at https://www.uspto.gov/
TrialPracticeGuideConsolidated)). The proceeding is in its preliminary
phase, 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 it is appropriate to dismiss the
petition and terminate the proceeding as to the Parties, without rendering a
decision on institution or a final written decision.
In the Joint Request, the Parties “request that the . . . Settlement
Agreement filed herewith as Exhibit 1021[,] be treated as business
confidential information, be kept separate from the files of the above-
captioned inter partes review, and be 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)” (Joint
Request 3).
The Parties assert “the Settlement Agreement . . . contain[s] highly
sensitive business confidential information that would substantially harm
their business interests if publicly disclosed” (Joint Motion 4). Thus, the
Parties “further jointly request that the Board order that any person or entity
making a written request, per 37 C.F.R. § 42.74(c)(1)–(2), for access to the
. . . Settlement Agreement, serve such written request upon the Parties on the
day the written request is provided to the Board” (id.).
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After reviewing the Settlement Agreement between the Parties, we
find that the Settlement Agreement contains confidential business
information regarding the terms of settlement. We also determine that the
Parties have complied with the requirements of 37 C.F.R. § 42.74(c) to have
the Settlement Agreement be treated as business confidential information
and kept separate from the files of the ’764 Patent in this proceeding.
Accordingly, we grant the Parties’ request to treat the Settlement Agreement
(Ex. 1021) between the Parties as business confidential information under 37
C.F.R. § 42.74(c) and keep the Settlement Agreement separate from the files
of the involved patents and associated proceeding.
We deny, however, the Parties’ request that the Board order that any
person or entity making a written request, per 37 C.F.R. § 42.74(c)(1)–(2),
for access to the Settlement Agreement, to serve such written request upon
the Parties on the day the written request is provided to the Board, as this
requirement is not contemplated by our Rules. In particular, 37 C.F.R.
§ 42.74(c) requires that the settlement agreement be made available to a
government agency “on written request to the Board,” or to any other person
“upon written request to the Board” and on showing of good cause; we
decline to impose an additional burden on the requester to serve such written
request upon the Parties.
This Order does not constitute a final written decision pursuant to
35 U.S.C. § 318(a).
III. ORDER
Accordingly, it is
ORDERED that the Joint Motion to Terminate is granted;
FURTHER ORDERED that the Joint Request to Treat Settlement
Agreement as Business Confidential Information is granted, and the
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Settlement Agreement shall remain designated as “Parties and Board Only”
in the Board’s filing system, shall made available only to Federal
Government agencies on written request, or to any person on a showing of
good cause, and shall be kept separate from the files of the involved patent
and associated proceeding, pursuant to 37 C.F.R. § 42.74(c);
FURTHER ORDERED that the Parties’ request that the Board order
that any person or entity making a written request, per 37 C.F.R.
§ 42.74(c)(1)–(2), for access to the Settlement Agreement, serve such
written request upon the Parties on the day the written request is provided to
the Board, is denied; and
FURTHER ORDERED that the above-captioned proceeding is
terminated and the petition is dismissed.

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For PETITIONER:
Michael Anderson
Jason Oliver
BAKER & HOSTETLER LLP
meanderson@bakerlaw.com
joliver@bakerlaw.com

For PATENT OWNER:
Robert Sterne
Gaby Longsworth
James Hietala
STERNE KESSLER GOLDSTEIN & FOX PLLC
Rsterne-ptab@sternekessler.com
Glongs-ptab@sternekessler.com
Jhietala-ptab@sternekessler.com

Mark Friedman
DR. MARK FRIEDMAN LTD.
patents@friedpat.com