WHG Properties, LLC

Patent Trials and Appeals Board

Dec 17, 2020

IPR2020-00373 (P.T.A.B. Dec. 17, 2020)

Trials@uspto.gov Paper 21
571.272.7822 Entered: December 17, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

LEWIS MACHINE & TOOL COMPANY,
Petitioner,

v.

WHG PROPERTIES, LLC,
Patent Owner.

IPR2020-00373
Patent 7,600,338 B2

Before JAMES A. TARTAL, ROBERT L. KINDER, and
AVELYN M. ROSS, Administrative Patent Judges.

ROSS, Administrative Patent Judge.

TERMINATION
Due to Settlement After Institution of Trial
Granting Request to Treat Settlement Agreement as
Business Confidential Information
35 U.S.C. § 317; 37 C.F.R. §§ 42.72
IPR2020-00373
Patent 7,600,338 B2
2
INTRODUCTION
On December 15, 2020, with our prior authorization, Lewis
Machine & Tool Company (“Petitioner”) and WHG Properties, LLC
(“Patent Owner”) (collectively, “the parties”) filed a Joint Motion to
Terminate the inter partes review in IPR2020-00373. Paper 19 (“Motion”).
Together with the Motion, the parties filed a copy of their written Settlement
Agreement (Ex. 2026, “Settlement Agreement”), and a Joint Request that the
Settlement Agreement be Treated as Business Confidential Information
Pursuant to 35 U.S.C. § 317(b). Paper 20 (“Joint Request”).
The Board generally expects that a case “will terminate after the filing
of a settlement agreement, unless the Board has already decided the merits.”
Consolidated Trial Practice Guide, 86 (Nov. 2019) (“Consolidated TPG”)1;
see 35 U.S.C. §317(a) and 37 C.F.R. § 42.72. Petitioner filed a petition for
inter partes review, i.e., IPR2020-00373, challenging U.S. Patent
No. 7,600,338 (“the ‘338 patent”) on January 14, 2020. Paper 1. We
instituted inter partes review on July 27, 2020. The oral hearing is
scheduled for April 27, 2021. Paper 7.
The parties explain that termination of this proceeding is appropriate
“[b]ecause LMT and WHG have resolved all of their disputes regarding the
’338 Patent and there are no other outstanding disputes involving the ’338
Patent,” including this inter partes review as well as the related district court
litigation in Illinois. Paper 19, 2; Ex. 2026, 2.
Under these circumstances, we determine that it is appropriate to enter
judgment and terminate this proceeding without rendering a final written

1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
IPR2020-00373
Patent 7,600,338 B2
3
decision. See 35 U.S.C. § 317(a); 37 C.F.R. §§ 42.5(a), 42.72. After
reviewing the Settlement Agreement, we further find that it contains
confidential business information regarding the terms of the settlement and
that good cause exists to treat the Settlement Agreement as business
confidential information to be kept separate from the patent file. See
35 U.S.C. § 317(b); 37 C.F.R. § 42.74(c). This Order does not constitute a
Final Written Decision under 35 U.S.C. § 318(a).

ORDER
In view of the foregoing, it is
ORDERED that the Joint Request to File Settlement as Business
Confidential Information (Paper 20) is granted; and
FURTHER ORDERED that the Settlement Agreement (Ex. 2026)
shall be treated as business confidential information and shall be kept
separate from the patent file; and
FURTHER ORDERED that the parties’ Joint Motion to Terminate the
inter partes review (Paper 19) is granted and this proceeding is hereby
terminated.

IPR2020-00373
Patent 7,600,338 B2
4
PETITIONER:
William McKenna
John McNett
WOODARD, EMHARDT, HENRY, REEVES & WAGNER LLP
wmckenna@uspatent.com
jcm@uspatent.com

PATENT OWNER:
Christopher Douglas
Blas Arroyo
Scott Stevens
ALSTON & BIRD LLP
Christopher.douglas@alston.com
blas.arroyo@alston.com
scott.stevens@alston.com