Epic Lift Systems, LLCv.INTEGRATED PRODUCTION SERVICES, INC.

Patent Trial and Appeal BoardOct 19, 2015

09630255 (P.T.A.B. Oct. 19, 2015)

Trials@uspto.gov Paper 25 571-272-7822 Entered: October 19, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ EPIC LIFT SYSTEMS, LLC, Petitioner, v. INTEGRATED PRODUCTION SERVICES, INC., Patent Owner. ____________ Case IPR2014-01522 Patent 6,467,541 B1 ____________ Before JAMES P. CALVE, RICHARD E. RICE, and CARL M. DeFRANCO, Administrative Patent Judges. CALVE, Administrative Patent Judge. ORDER Termination of the Proceeding 37 C.F.R. § 42.74 IPR2014-01522 Patent 6,467,541 B1 2 Pursuant to our e-mail authorization, on October 1, 2015, the parties filed a Joint Motion to Terminate Proceedings (Paper 23, “Joint Mot.”) pursuant to 35 U.S.C. § 317(a), as well as 37 C.F.R. §§ 42.72 and 42.74(a). Contemporaneously, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), the parties filed a Joint Request to File Settlement Agreement as Business Confidential Information (Paper 24), with a true copy of a Settlement and License Agreement (Exhibit 1023). Although we issued an Institution Decision (Paper 8) on March 30, 2015, for all challenged claims of U.S. Patent No. 6,467,541 B1 (“the ’541 Patent”), we are at a relatively early stage in this proceeding with oral argument, if requested by the parties, scheduled for November 10, 2015. Paper 9, 5. The parties identified a related, co-pending U.S. litigation between the parties titled Integrated Production Services, Inc. v. Epic Lift Systems, LLC, Civil Action No. 4:14-cv-00246 (S.D. Tex.). Pet. 1; Paper 5, 2. The parties inform us that the Settlement and License Agreement requires dismissal of this co-pending litigation, and resolves all other pending disputes between the parties relating to the ’541 patent. Joint Mot. 1–2. No other litigation or proceeding involving the ’541 patent is contemplated in the foreseeable future. Joint Mot. 2. The parties “certify that there are no collateral agreements or understandings made in connection with, or in contemplation of, the termination of the ’541 [IPR].” Id.at 3. Thus, we understand the filed agreement to settle all disputes between the parties with respect to this proceeding. Under these circumstances, we determine that good cause exists to terminate this proceeding, without rendering a final written decision. IPR2014-01522 Patent 6,467,541 B1 3 ORDER Accordingly, it is ORDERED that the Joint Motion to Terminate Proceedings is granted; FURTHER ORDERED that the Joint Request to File Settlement Agreement as Business Confidential Information is granted; FURTHER ORDERED that the Settlement and License Agreement filed as Exhibit 1023 shall be treated as business confidential information and kept separate from the patent file; and FURTHER ORDERED that the case is terminated. IPR2014-01522 Patent 6,467,541 B1 4 PETITIONER: Keith Rutherford J. David Cabello James Hall Stephen Zinda BLANK ROME LLP epicipr@blankrome.com epicipr@blankrome.com jhall@blankrome.com szinda@blankrome.com PATENT OWNER: J. Dean Lechtenberger Andrew Sommer Dustin Edwards WINSTON & STRAWN LLP JLechtenberger@winston.com asommer@winston.com DEdwards@winston.com

Epic Lift Systems, LLC v. INTEGRATED PRODUCTION SERVICES, INC.