Ace Evert, Inc.v.LakeSouth Holdings, LLC

Patent Trial and Appeal Board

Jul 8, 2015

10068424 (P.T.A.B. Jul. 8, 2015)

Trials@uspto.gov Paper 11
571-272-7822 Entered: July 8, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

ACE EVERT, INC.,
Petitioner,

v.

LAKESOUTH HOLDINGS, LLC,
Patent Owner.

Case IPR2015-00987
Patent 6,612,713 B1
____________

Before MICHAEL W. KIM, KRISTINA M. KALAN, and BETH Z. SHAW,
Administrative Patent Judges.

KALAN, Administrative Patent Judge.

TERMINATION
Dismissing the Proceeding
37 C.F.R. § 42.5(a), 37 C.F.R. § 42.71(a)

IPR2015-00987
Patent 6,612,713 B1

2
The parties have requested that the above-captioned proceeding be
terminated pursuant to a settlement. The Board authorized the parties to file
a joint motion to terminate the above-captioned proceeding on July 1, 2015.
On July 6, 2015, and pursuant to 35 U.S.C. § 317, the parties filed a
joint motion to terminate the above-captioned proceeding (Paper 9), along
with a joint motion to file the settlement agreement as business confidential
information, to be kept separate from the patent file pursuant to 35 U.S.C.
§ 317(b) and 37 C.F.R. § 42.74(c) (Paper 10). The joint motion to file the
settlement agreement as business confidential information included a copy
of the settlement agreement. Paper 10, Exhibit 1.
Generally, the Board expects that a proceeding will terminate after the
filing of a settlement agreement. See, e.g., Office Patent Trial Practice
Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). This case is in the
preliminary proceeding stage. A preliminary proceeding begins with the
filing of a petition for instituting a trial and ends with a written decision as to
whether trial will be instituted. See 37 C.F.R. § 42.2. Petitioner filed a
Petition on April 1, 2015. Patent Owner has not yet filed a Preliminary
Response, which is due on or before July 10, 2015. No decision whether to
institute a trial has been made.
The joint motion to terminate indicates that the parties have settled
their dispute involving U.S. Patent No. 6,612,713 B1 (“the ’713 patent”).
Paper 9, 1. The joint motion to terminate further indicates that the ’713
Patent “is not the subject of any other proceeding pending before the United
States Patent & Trademark Office, and there are no current or contemplated
pending litigation proceedings involving the ’713 Patent.” Id. at 2.
IPR2015-00987
Patent 6,612,713 B1

3
Based on the facts of the case, and in view of the parties’ joint request
for termination of this proceeding, we determine that it is appropriate to
dismiss the petition as to both Petitioner and Patent Owner without rendering
either a decision to institute or a final written decision. See 37 C.F.R.
§§ 42.5(a); 42.71(a). Therefore, the joint motion to terminate and the
request to treat the settlement agreement as business confidential
information are granted. This paper does not constitute a final written
decision pursuant to 35 U.S.C. § 318(a).
Accordingly, it is
ORDERED that the joint motion to treat the settlement agreement as
business confidential information, to be kept separate from the patent file, is
granted;
FURTHER ORDERED that the joint motion to terminate the
proceeding is granted; and
FURTHER ORDERED that the Petition for Inter Partes Review of
the above-referenced patent is dismissed.

IPR2015-00987
Patent 6,612,713 B1

4
FOR PETITIONER:

Jeffrey A. Pine
Steven McMahon Zeller
DYKEMA GOSSETT PLLC
jpine@dykema.com
szeller@dykema.com

FOR PATENT OWNER:

Michael A. Benefield
ALBRITTON LAW FIRM
ls@emafirm.com