Taiwan Semiconductor Manufacturing Company, Ltd.v.Tela Innovations, Inc.

Patent Trial and Appeal BoardSep 23, 2014

12563076 (P.T.A.B. Sep. 23, 2014)

Trials@uspto.gov Paper 10 Tel: 571-272-7822 Entered: September 23, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ TAIWAN SEMICONDUCTOR MANUFACTURING CO., LTD., Petitioner, v. TELA INNOVATIONS, INC., Patent Owner. _______________ Case IPR2014-00999, Patent 8,264,049 Case IPR2014-01001, Patent 8,258,547 Cases IPR2014-01007 & IPR2014-01038, Patent 8,635,583 1 _______________ Before KARL D. EASTHOM, TREVOR M. JEFFERSON, and BEVERLY M. BUNTING, Administrative Patent Judges. EASTHOM, Administrative Patent Judge. JUDGMENT Termination of Proceeding 37 C.F.R. §§ 42.72, 42.73, 42.74 1 We enter this Judgment in each of the four proceedings. The parties are not authorized to use this heading style. IPR2014-00999, Patent 8,264,049; IPR2014-01001, Patent 8,258,547 IPR2014-01007 & IPR2014-01038, Patent 8,635,583 2 In each case, after prior authorization, the parties filed a joint motion to terminate the proceeding pursuant to a settlement agreement. Paper 7. 2 In each case, the parties also filed a true copy of their written settlement agreement, made in connection with the termination of the instant proceeding, in accordance with 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b). Ex. 2001. Additionally, in each case, the parties submitted a joint request to have their settlement agreement treated as confidential business information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 8. The Board has not instituted inter partes review of any of these cases. Patent Owner has not filed a Preliminary Response in any of these cases. In their joint motions to terminate, the parties indicate that they have obligations under a Letter of Intent (settlement agreement) where the parties shall “dismiss, with prejudice, all adverse proceedings currently pending against the other party, including without limitation, the matters pending before the District Courts for the Northern District of California and the District of Delaware, and the U.S. International Trade Commission, and, to the extent feasible, the U.S. PTO.” Paper 7, 2 (emphasis deleted). In the event Petitioner cannot withdraw from a USPTO proceeding, Petitioner must cease any participation in the proceeding. Id. The International Trade Commission (ITC) has terminated the co-pending investigation, and the District Court cases have been dismissed. Id. at 46. 3 2 Each case has identical paper and exhibit numbers pertaining to settlement. 3 See Paper 7 in each proceeding for an identification of the respective District Court litigation. IPR2014-00999, Patent 8,264,049; IPR2014-01001, Patent 8,258,547 IPR2014-01007 & IPR2014-01038, Patent 8,635,583 3 The parties urge the Board to terminate each of these instant proceedings with respect to both Petitioner and Patent Owner. Id. at 2–4. The parties submit that termination is appropriate because each “proceeding is in its infancy.” Id. at 4. Issues raised during the trial have not been briefed fully and the Board has not yet decided the merits of each proceeding. Id. Petitioner indicates that it will no longer participate even if the Board does not terminate the respective proceeding. Id. According to the parties, Congress and federal courts have expressed a strong interest in encouraging settlement in litigation. Id. at 3. In exercising our independent determination, we generally expect that a proceeding will terminate after the filing of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Upon consideration of the parties’ contentions, we determine that terminating each of the proceedings with respect to both Petitioner and Patent Owner, at this early juncture, promotes efficiency and minimizes unnecessary costs. Based on the facts of these cases, it is appropriate to enter judgment in each case without rendering a final written decision. 4 See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. Accordingly, it is ORDERED that the joint motions to terminate IPR2014-00999, IPR2014- 01001, IPR2014-01007, and IPR2014-01038, are granted; FURTHER ORDERED that each of the proceedings is hereby terminated as to each of the parties, Petitioner and Patent Owner; and 4 A judgment means a final written decision by the Board, or a termination of a proceeding. 37 C.F.R. § 42.2. IPR2014-00999, Patent 8,264,049; IPR2014-01001, Patent 8,258,547 IPR2014-01007 & IPR2014-01038, Patent 8,635,583 4 FURTHER ORDERED that the parties’ joint requests that the settlement agreement be treated as business confidential information kept separate from the patent files, and made available only to Federal Government agencies on written request, or to any person on a showing of good cause, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), are granted. FOR PETITIONER: David O’Dell David.odell.ipr@haynesboone.com David L. McCombs David.mccombs.ipr@haynesboone.com FOR PATENT OWNER: Albert Penilla al@mpiplaw.com Jon Wright Jwright-ptab@skgf.com Raymond Werner Rwerner-ptab@skgf.com William Belanger belangerw@pepperlaw.com

Taiwan Semiconductor Manufacturing Company, Ltd. v. Tela Innovations, Inc.