CeramTec GmbHv.CeraMedic LLCDownload PDFPatent Trial and Appeal BoardNov 5, 201508727409 (P.T.A.B. Nov. 5, 2015) Copy Citation 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 Copy with citationCopy as parenthetical citation