E & E Co., Ltd.

Patent Trials and Appeals Board

Mar 7, 2022

PGR2021-00083 (P.T.A.B. Mar. 7, 2022)

Trials@uspto.gov Paper No. 17 571-272-7822 Entered: March 7, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ LONDON LUXURY LLC, Petitioner, v. E & E CO., LTD., Patent Owner. ____________ PGR2021-00083 Patent 10,820,376 B2 ____________ Before MICHAEL R. ZECHER, SCOTT C. MOORE, and JASON W. MELVIN, Administrative Patent Judges. ZECHER, Administrative Patent Judge. TERMINATION Due to Settlement After Institution of Trial 35 U.S.C. § 327; 37 C.F.R. § 42.74 PGR2021-00083 Patent 10,820,376 B2 2 I. DISCUSSION On March 3, 2022, with our authorization via email, Petitioner, London Luxury LLC (“London Luxury”), and Patent Owner, E & E Co., Ltd., jointly filed the following: (1) a “Joint Motion to Terminate Post Grant Review [PGR]” (Paper 14, “Mot.”); (2) a true copy of the parties’ settlement agreement (Ex. 2014); and (3) a “Joint Request to File Settlement Agreement as Business Confidential Information Under 35 U.S.C. § 327(b) and 37 C.F.R. § 42.74(c)” (Paper 15). For the following reasons, we grant the parties’ “Joint Motion to Terminate PGR,” as well as the parties’ joint request to file their settlement agreement as business confidential information and keep it separate from the file of the involved patent. On November 15, 2021, we entered a decision instituting a PGR of claims 1-8 and 10-16 of U.S. Patent No. 10,820,376 B2 (Ex. 1001, “the ’376 patent”). Paper 10. The trial, however, is still in an early stage because the parties have not completed substantive briefing and we have not yet decided the merits. In the “Joint Motion to Terminate PGR,” the parties state that “[t]ermination of the instant PGR . . . is appropriate under [Patent Trial and Appeal Board] precedent and would save the Board significant administrative and judicial resources in issuing a final written decision.” Mot. 4. The parties represent that, “[u]nder terms of the settlement agreement, the parties agreed to jointly seek termination of [this proceeding], and the parties agreed to dismiss [the] related district court litigation.” Id. at 2. The parties also represent that Exhibit 2014 is a true copy of the parties’ settlement agreement that “resolves all currently pending Patent Office and District Court proceedings between the parties involving PGR2021-00083 Patent 10,820,376 B2 3 the ’376 patent.” Id. Although not stated explicitly in the “Joint Motion to Terminate PGR,” we understand the settlement agreement that is Exhibit 2014 to be the only agreement between the parties and there are no other agreements, oral or written, between the parties made in connection with, or in contemplation of, the termination of this proceeding. See id. Under these particular circumstances, we determine that it is appropriate to terminate the trial without rendering a final written decision. See 37 C.F.R. § 42.72. We also reviewed the true copy of the parties’ settlement agreement (Ex. 2014), and we determine that good cause exists to treat this settlement agreement as business confidential information and keep it separate from the file of the ’376 patent. See 35 U.S.C. § 327(b); 37 C.F.R. § 42.74(c). II. ORDER In consideration of the foregoing, it is hereby: ORDERED that the parties’ joint request to file their settlement agreement as business confidential information and keep it separate from the file of the ’376 patent is granted; FURTHER ORDERED that Exhibit 2014 shall remain business confidential information, and shall be kept separate from the file of the ’376 patent; and FURTHER ORDERED that the parties’ “Joint Motion to Terminate PGR” filed pursuant to 35 U.S.C. 327(a) and 37 C.F.R. § 42.74 is granted. PGR2021-00083 Patent 10,820,376 B2 4 For PETITIONER: Blake Coblentz Aaron Lukas Keri Schaubert COZEN O’CONNOR wcoblentz@cozen.com alukas@cozen.com kschaubert@cozen.com For PATENT OWNER: Joseph Jennings Marko Zoretic KNOBBE, MARTENS, OLSON & BEAR LLP 2jfj@knobbe.com 2mrz@knobbe.com