CeramTec GmbHv.CeraMedic LLC

Patent Trial and Appeal Board

Nov 5, 2015

08727409 (P.T.A.B. Nov. 5, 2015)

Trials@uspto.gov Paper 17
571-272-7822 Entered: November 5, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

CERAMTEC GMBH,
Petitioner,

v.

CERAMEDIC LLC,
Patent Owner.
____________

Case IPR2015-01504
Patent 6,066,584
____________

Before GRACE KARAFFA OBERMANN, KRISTINA M. KALAN, and
JEFFREY W. ABRAHAM, 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)

IPR2015-01504
Patent 6,066,584

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 or dismiss the above-captioned proceeding on
October 29, 2015.
On November 2, 2015, and pursuant to 35 U.S.C. § 317, the parties
filed a joint motion to terminate or dismiss the above-captioned proceeding
(Paper 15) and a joint request to treat 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 16), along with a copy
of the settlement agreement (Ex. 1415).
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. 48756, 48768 (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 June 29, 2015. Paper 1. Patent Owner filed a Preliminary
Response on October 19, 2015. Paper 13. No decision whether to institute a
trial has been made.
The parties jointly request that IPR2015-01504 be terminated or
dismissed. Paper 15, 1, 5. The parties “certify that there are no collateral
agreements or understandings made in connection with, or in contemplation
of, the termination of IPR2015-01504.” Id. at 4. The parties represent that,
pursuant to the settlement agreement, they have agreed to terminate not only
the present proceeding but also the Delaware Action and the Third Circuit
Appeal (as those terms are defined in the settlement agreement). Id. at 4.
IPR2015-01504
Patent 6,066,584

3
The parties also represent that IPR2015-01328, a case involving the same
patent and same parties, will be allowed to proceed in its entirety. Id.
Based on the facts of the case, and in view of the parties’ joint motion
for termination or dismissal 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
or dismiss and the joint 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 request 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 or dismiss
the proceeding is granted; and
FURTHER ORDERED that the Petition for Inter Partes Review of
the above-referenced patent is dismissed.

IPR2015-01504
Patent 6,066,584

4
FOR PETITIONER:

Gina Shishima
gina.shishima@nortonrosefulbright.com

Thomas Owens
Tom.owens@nortonrosefulbright.com

Mark Garrett
Mark.garrett@nortonrosefulbright.com

FOR PATENT OWNER:

Kevin McNish
kmcnish@desmaraisllp.com