Wonderland Switzerland AG

Patent Trials and Appeals Board

Apr 7, 2021

IPR2021-00134 (P.T.A.B. Apr. 7, 2021)

Trials@uspto.gov Paper 8
571-272-7822 Entered: April 7, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

BRITAX CHILD SAFETY, INC.,
Petitioner,

v.

WONDERLAND SWITZERLAND AG,
Patent Owner.
____________

IPR2021-00134
Patent 8,123,294 B2
____________

Before LYNNE H. BROWNE, TIMOTHY J. GOODSON, and
RICHARD H. MARSCHALL, Administrative Patent Judges.

MARSCHALL, Administrative Patent Judge.

DECISION
Settlement Prior to Institution of Trial
Granting Joint Motion to Dismiss Proceeding and
Granting Joint Request to File Settlement Agreement as
Business Confidential Information and to Maintain
Said Agreement Separate from the Public File
37 C.F.R. § 42.74

IPR2021-00134
Patent 8,123,294 B2

2

INTRODUCTION
Petitioner and Patent Owner (collectively “the parties”) have
requested that the above-identified inter partes review proceeding be
terminated pursuant to a settlement. With our authorization, the parties filed
a Joint Motion to dismiss the above-identified proceeding (“Joint Motion”).
Paper 6, 2. The parties also filed a Joint Request to File Settlement
Agreement as Business Confidential Information and to Maintain Said
Agreement Separate from the Public File (“Joint Request”), and a related
Settlement Agreement. Paper 7; Exhibit 1016.
DISCUSSION
In the Joint Motion, the Parties represent that they have reached an
agreement to jointly seek dismissal of this inter partes review proceeding,
that the filed copy of the Settlement Agreement is a true copy, and “there are
no other agreements or understandings, oral or written, between them,
including any collateral agreements, made in connection with, or in
contemplation of, the dismissal of the present proceeding as set forth in 35
U.S.C. § 317(b).” Joint Motion 2. The parties also represent that the
Settlement Agreement resolves all disputes regarding U.S. Patent No.
8,123,294 B2, and that there are no other related agreements between the
parties. Id. at 2.
We have not yet instituted a trial on the above-identified proceeding.
Nor have we decided the merits of the proceeding, and a final written
decision has not been entered in the proceeding. The parties have shown
adequately that the termination of the proceeding is appropriate. Under
these circumstances, we determine that good cause exists to terminate the
proceeding with respect to the parties.
IPR2021-00134
Patent 8,123,294 B2

3

The Parties also requested that the Settlement Agreement be treated as
business confidential information and be kept separate from the file of U.S.
Patent No. 8,123,294 B2. Joint Request 2–3. After reviewing the
Settlement Agreement, 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).
ORDER
Accordingly, for the reasons discussed above, it is:
ORDERED that the Joint Motion is granted, and IPR2021-00134 is
terminated with respect to Petitioner and Patent Owner; and
FURTHER ORDERED that the Joint Request is granted, and the
Settlement Agreement shall be kept separate from the file of U.S. Patent No.
8,123,294 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).

IPR2021-00134
Patent 8,123,294 B2

4

For PETITIONER:
Benjamin E. Weed
Alan L. Barry
Erik J. Halverson
K&L GATES LLP
benjamin.weed.ptab@klgates.com
al.barry.ptab@klgates.com
erik.halverson@klgates.com

For PATENT OWNER:

Aaron L. Parker
Daniel F. Klodowski
Brooke M. Wilner
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER LLP
aaron.parker@finnegan.com
daniel.klodowski@finnegan.com
brooke.wilner@finnegan.com