Ultradent Products, Inc.v.Kerr Corporation

Patent Trial and Appeal BoardApr 17, 2015

10655781 (P.T.A.B. Apr. 17, 2015)

Trials@uspto.gov Paper 8 Tel: 571-272-7822 Entered: April 17, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ ULTRADENT PRODUCTS, INC., Petitioner, v. KERR CORPORATION, Patent Owner. _______________ Case IPR2015-00126 Patent 7,066,733 B2 _______________ Before JOSIAH C. COCKS, BENJAMIN D. M. WOOD, and MITCHELL G. WEATHERLY, Administrative Patent Judges. WOOD, Administrative Patent Judge. TERMINATION Dismissing the Petition 37 C.F.R. §§ 42.5(a), 42.71(a), 42.74 IPR2015-00126 Patent 7,066,733 B2 2 The parties have filed a joint motion to terminate this proceeding under 35 U.S.C. § 317(a). Paper 6. In the joint motion the parties state that they “have settled their dispute and have reached agreement to terminate this inter partes review.” Id. at 2. The parties subsequently filed a copy of a written settlement agreement (Ex. 1040), and a joint request that the settlement agreement be treated as business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (Paper 7). Pursuant to 37 C.F.R. § 42.20, a party must obtain Board authorization to file a motion. The parties did not seek prior authorization to file their joint motion to terminate. The Board, however, may waive or suspend any requirement of part 42. 37 C.F.R. § 42.5(b). Given the particular circumstances of this case, we exercise our authority and waive the requirement for prior Board authorization to file the joint motion to terminate. Trial has not yet been instituted in this proceeding. Thus, this proceeding is in its preliminary stages. Under these circumstances, and upon review of the parties’ joint motion and settlement agreement, we determine that it is appropriate to dismiss the petition. See 37 C.F.R. §§ 42.5(a), 42.71(a), 42.74. This paper does not constitute a final written decision pursuant to 35 U.S.C. § 318(a). Accordingly, it is ORDERED that the joint motion to terminate this proceeding is granted; FURTHER ORDERED that the Petition for Inter Partes Review of the above-referenced patent is dismissed; and IPR2015-00126 Patent 7,066,733 B2 3 FURTHER ORDERED that the parties’ settlement agreement (Ex. 1040) will be treated as business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). IPR2015-00126 Patent 7,066,733 B2 4 PETITIONER: Daniel C. Higgs dchiggs@stoel.com Dorothy P. Whelan whelan@fr.com PATENT OWNER: John Davis jdavis@whe-law.com Kurt Summe ksumme@whe-law.com

Ultradent Products, Inc. v. Kerr Corporation