MDX MEDICAL, INC.v.Healthgrades Operating Company Inc.

Patent Trial and Appeal BoardApr 16, 2015

13551471 (P.T.A.B. Apr. 16, 2015)

Trials@uspto.gov Paper 23 571-272-7822 Entered: April 16, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ MDx MEDICAL, INC., Petitioner, v. HEALTH GRADES, INC., Patent Owner. ____________ Case IPR2014-01090 Patent 8,719,052 B2 Before MICHAEL W. KIM, PATRICK R. SCANLON, and DAVID C. MCKONE, Administrative Patent Judges. SCANLON, Administrative Patent Judge. JUDGMENT Termination of Proceeding 37 C.F.R. § 42.72 IPR2014-01090 Patent 8,719,052 B2 2 On April 10, 2015, the parties filed a Joint Motion to Terminate Proceeding Pursuant to 35 U.S.C. § 317 (Paper 20) and a Joint Request to File Settlement Agreement as Business Confidential Information under 35 U.S.C. § 317 (Paper 21). The Joint Motion to Terminate Proceeding is accompanied by a copy of a settlement agreement styled “Patent License and Settlement Agreement” and filed as Exhibit 2012. The parties represent that Exhibit 2012 is a “true and correct [copy]” of their agreement. Paper 20, 2: see also Paper 21, 1 (identifying the exhibit as a “true, unredacted copy of the parties’ Settlement Agreement”). The Board authorized the filing of these papers via e-mail on April 10, 2015. Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” The parties indicate that they have settled their dispute involving U.S. Patent No. 8,719,052 (“the ’052 patent”) and have agreed to terminate this inter partes review. Paper 20, 1. The parties further indicate that the related district court cases are settled and closed, and “Patent Owner represents also represents that no additional district court litigation is currently pending and none is contemplated in the foreseeable future.” Id. at 2. Although we instituted an inter partes review of claims 1–4, 6–11, 15– 29, and 33 of the ’052 patent on January 13, 2015 (Paper 9), the proceeding is still in its early stages and Patent Owner has not filed a Patent Owner Response. We have reviewed Exhibit 2012 and determine that, under the present circumstances, it is appropriate to enter judgment and terminate the proceeding without rendering a final written decision under 37 C.F.R. § 42.72. IPR2014-01090 Patent 8,719,052 B2 3 In consideration of the foregoing, it is hereby: ORDERED that the joint motion to terminate this proceeding is granted; FURTHER ORDERED that this proceeding is terminated; and FURTHER ORDERED that the joint request that the Patent License and Settlement Agreement (Ex. 2012) be treated as business confidential information and be kept separate from the file of the involved patent pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is granted. IPR2014-01090 Patent 8,719,052 B2 4 PETITIONER: Scott Stimpson sstimpson@sillscummis.com David Lee dlee@sillscummis.com PATENT OWNER: Timothy Scull tscull@merchantgould.com

MDX MEDICAL, INC. v. Healthgrades Operating Company Inc.