`Tel: 571-272-7822
`
`Paper 26
`Entered: July 28, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`HEARTLAND TANNING, INC.
`Petitioner
`
`
`
`v.
`
`SUNLESS, INC.
`Patent Owner
`_______________
`
`Case IPR2014-00018
`Patent 8,201,288 B2
`_______________
`
`
`
`
`
`
`
`Before FRANCISCO C. PRATS, RAMA G. ELLURU, and JAMES A. TARTAL,
`Administrative Patent Judges.
`
`ELLURU, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`Case IPR2014-00018
`Patent 8,201,288 B2
`
`
`
`
`A conference call was held on Monday, July 28, 2014, in the above
`
`proceeding between Douglas Robinson, counsel for Petitioner; Frank M. Gasparo,
`
`counsel for Patent Owner; and Judges Prats, Elluru, and Tartal. The parties sought
`
`authorization to file a joint motion to terminate the proceeding on the basis that the
`
`parties have reached a settlement.
`
`Generally, the Board expects 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). The rule governing
`
`settlement indicates that any agreement between the parties made in connection
`
`with, or in contemplation of, the termination of a proceeding shall be in writing
`
`and filed with the Board. 37 C.F.R. § 42.74.
`
`During the conference call, the Board authorized the filing of a joint motion
`
`to terminate the proceeding and provided guidance as to the procedure for filing
`
`the parties’ settlement agreement and having the settlement agreement treated as
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`business confidential information under 37 C.F.R. § 42.74(c). The joint motion
`
`must (1) include a brief explanation as to why termination is appropriate; (2)
`
`identify all parties in any related litigation involving the patents at issue; (3)
`
`identify any related proceedings currently before the Office, and (4) discuss
`
`specifically the current status of each such related litigation or proceeding with
`
`respect to each party to the litigation or proceeding.
`
`The joint motion to terminate must be accompanied by a true copy of the
`
`parties’ settlement agreement, as required by 35 U.S.C. § 317(b) and 37 C.F.R. §
`
`42.74(b). A redacted version of the settlement agreement will not be accepted as a
`
`true copy of the settlement agreement. Moreover, the settlement agreement may
`
`not be expunged after termination of the proceeding.
`
` 2
`
`
`
`
`
`
`
`Case IPR2014-00018
`Patent 8,201,288 B2
`
`
`With respect to having the settlement agreement treated as business
`
`confidential information under 37 C.F.R. § 42.74(c), the parties must file the
`
`confidential settlement agreement electronically in the Patent Review
`
`Processing System (PRPS) as an exhibit in accordance with the instructions
`
`provided on the Board’s website (uploading as “Parties and Board Only”).
`
`The parties are directed to FAQ G2 on the Board’s website at
`
`http://www.uspto.gov/ip/boards/bpai/prps.jsp for instructions on how to file their
`
`settlement agreement as confidential.
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that the parties are authorized to file a joint motion to terminate
`
`this proceeding no later than August 4, 2014;
`
`FURTHER ORDERED that the joint motion must be accompanied by a true
`
`copy, labeled as an exhibit, of the parties’ settlement agreement as required by 35
`
`U.S.C. § 317(b) and 37 C.F.R. § 42.74(b);
`
`FURTHER ORDERED that, for the exhibit that is the settlement agreement
`
`filed in this proceeding, the parties may file a separate paper requesting that the
`
`settlement agreement be treated as business confidential information as specified in
`
`37 C.F.R. § 42.74(c); and
`
`FURTHER ORDERED that any confidential settlement agreement must be
`
`filed electronically in PRPS in accordance with the instructions provided on the
`
`Board’s website (uploading as “Parties and Board Only”).
`
` 3
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2014-00018
`Patent 8,201,288 B2
`
`
`FOR PETITIONER:
`
`Rudolph A. Telscher, Jr.
`Douglas A. Robinson
`Greg W. Meyer
`HARNESS, DICKEY & PIERCE, PLC
`rtelscher@hdp.com
`drobinson@hdp.com
`gmeyer@hdp.com
`
`
`
`FOR PATENT OWNER:
`
`Frank M. Gasparo
`Adam R. Hess
`VENABLE LLP
`FMGasparo@venable.com
`ARHess@venable.com
`
`
`
` 4
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