The Scotts Company LLCv.Encap, Llc.

Patent Trial and Appeal Board

Mar 16, 2015

09769076 (P.T.A.B. Mar. 16, 2015)

Trials@uspto.gov Paper 15
571-272-7822 Entered: March 16, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

THE SCOTTS COMPANY LLC,
Petitioner,

v.

ENCAP, LLC,
Patent Owner.
____________

Case IPR2014-01110
Patent 8,474,183 B2
____________

Before LORA M. GREEN, JAMES P. CALVE, and RAMA G. ELLURU,
Administrative Patent Judges.

ELLURU, Administrative Patent Judge.

DECISION
Termination of the Proceeding
37 C.F.R. § 42.72

I. DISCUSSION
On March 10, 2015, the parties filed a Joint Motion to terminate this
proceeding (Paper 13), as well as a Joint Request (Paper 14) to have their
settlement agreement treated as business confidential information under
IPR2014-01110
Patent 8,474,183 B2
2
35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). The parties also filed a true
copy of their settlement agreement. Ex. 2011. The parties indicate in their
Joint Motion that termination of this proceeding is appropriate because they
have reached an agreement regarding their dispute with respect to this inter
partes review. See Paper 13, 1. The parties indicate that they have agreed to
move to dismiss the related district court litigation involving the ’183 patent.
Id.
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 patent owner, unless the Office has decided the
merits of the proceeding before the request for termination is filed.” As the
parties indicate in their Joint Motion, this proceeding is in its early stages.
Paper 13, 1. We instituted an inter partes review of the ’183 patent on
January 9, 2015 (Paper 11), but Patent Owner has not yet filed a Patent
Owner Response.
Further, under 37 C.F.R. § 42.74(b), “[a]ny agreement or
understanding between the parties made in connection with, or in
contemplation of, the termination of a proceeding shall be in writing and a
true copy shall be filed with the Board before termination of the trial.” As
the parties have filed their written settlement agreement, and the parties have
agreed to move to dismiss the related district court litigation, we determine it
is appropriate to terminate this proceeding without rendering a Final Written
Decision as to the patentability of the challenged claims of the ’183 patent.
See 37 C.F.R. §§ 42.72. 42.73, 42.74.
IPR2014-01110
Patent 8,474,183 B2
3
II. ORDER
Accordingly, it is:
ORDERED that the parties’ Joint Motion to terminate this proceeding
is granted;
FURTHER ORDERED that the parties’ Joint Request that the
settlement agreement (Ex. 2011) be treated as business confidential
information, to be kept separate from the patent file, is granted; and
FURTHER ORDERED that this proceeding is terminated.

IPR2014-01110
Patent 8,474,183 B2
4
FOR PETITIONER:

Robert M. Schulman
rschulman@hunton.com

Christopher Yaen
cyaen@hunton.com

FOR PATENT OWNER:

Philip M. Weiss
weissandweiss@aol.com

Aaron T. Olejniczak
aarono@andruslaw.com