Luminex Corporationv.Irori Technologies, Inc.

Patent Trial and Appeal Board

Mar 26, 2015

09098122 (P.T.A.B. Mar. 26, 2015)

Trials@uspto.gov Paper 16
Tel: 571-272-7822 Entered: March 26, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
LUMINEX CORPORATION
Petitioner
v.
IRORI TECHNOLOGIES, INC.
Patent Owner
_______________

Cases IPR2014-00929 (Patent 6,372,428) 1
IPR2014-00930 (Patent 6,416,714)
IPR2014-00931 (Patent 6,352,854)2
_______________

Before LORA M. GREEN, ZHENYU YANG, and TINA E. HULSE,
Administrative Patent Judges.

GREEN, Administrative Patent Judge.

JUDGEMENT
Termination of the Proceeding
37 C.F.R. § 42.73

1 This order addresses issues that are the same in the identified cases. We exercise
our discretion to issue one order to be filed in each case. The parties are authorized
to use this style heading when filing a single paper in the proceedings, provided
that such heading includes a footnote attesting that “the word-for-word identical
paper is filed in each proceeding identified in the heading.”
2 Cases IPR2014-00932 and IPR2014-00933, involving the same patent, were
consolidated with this proceeding.
IPR2014-00929 (Patent 6,372,428)
IPR2014-00930 (Patent 6,416,714)
IPR2014-00931 (Patent 6,352,854)

2

The parties have requested that these trial proceedings be terminated
pursuant to a settlement. In that regard, we note that the parties did not seek
authorization to file the joint motions to terminate. While we find that oversight to
be harmless in this particular instance, we remind the parties that in the future, they
should request authorization from the Board before filing any motion whose filing
is not authorized by rule or provided for explicitly in the scheduling order.
On March 23, 2015, the parties filed joint motions to terminate, as well as
joint motions requesting that the joint settlement agreement be treated as business
confidential information and sealed. Papers 14 and 15 in IPR2014-00929; Papers
12 and 13 in IPR2014-00930; Papers 13 and 14 in IPR2014-00931; see also
35 U.S.C. § 317; 37 C.F.R. § 42.72; 37 C.F.R. § 42.74. With their motions to
terminate and seal, the parties also filed a copy of a written settlement agreement.
Ex. 1 in each of the proceedings.
A decision by the Board to institute the trials was entered into each of the
proceedings on December 11, 2014. Paper 9 in IPR2014-00929; Paper 7 in
IPR2014-00930; Paper 7 in IPR2014-00931. These proceedings, however, are in
the preliminary stages. The parties have not identified any other related matters.
Under these circumstances, we determine that it is appropriate to enter judgment3
and terminate the trials without rendering a final written decision. 37 C.F.R.
§ 42.72.
It is, therefore,
ORDERED that the joint motions to terminate the proceeding are
GRANTED and the proceedings are hereby terminated;

3 A judgment means a final written decision by the Board, or a termination of a
proceeding. 37 C.F.R. § 42.2
IPR2014-00929 (Patent 6,372,428)
IPR2014-00930 (Patent 6,416,714)
IPR2014-00931 (Patent 6,352,854)

3

FURTHER ORDERED that the parties’ joint requests that the settlement
agreement be treated as business confidential information and shall be kept
separate from the file of the involved patent under the provisions of 35 U.S.C.
§ 317(b) and 37 C.F.R. § 42.74(c), is GRANTED.

For PETITIONER:

James M. Heintz
Aaron G. Fountain
DLA PIPER LLP (US)
jim.heintz@dlapiper.com
Luminex-lrori-IPR@dlapiper.com

For PATENT OWNER:

Peter D. Weinstein
Dean G. Stathakis, Ph.D.
ONE3 IP MANAGEMENT, P.C.
peter_weinstein@one3ip.com
dean_stathakis@one3ip.com