`571-272-7822
`
`
`
`
`
`Paper 22
`Entered: December 12, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TELADOC, INC.,
`Petitioner,
`
`v.
`
`AMERICAN WELL CORP.,
`Patent Owner.
`____________
`
`Case IPR2016-00100
`Patent 7,590,550 B2
`____________
`
`
`
`Before BRIAN J. McNAMARA, MICHAEL J. FITZPATRICK, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`
`GALLIGAN, Administrative Patent Judge.
`
`DECISION
`Termination of Trial
`35 U.S.C. § 317, 37 C.F.R. §§ 42.72 and 42.74
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-00100
`Patent 7,590,550 B2
`
`I.
`
`DISCUSSION
`
`On November 29, 2016, the parties filed a Joint Motion to Terminate
`
`this proceeding (Paper 20) pursuant to a written agreement, as well as a Joint
`
`Request (Paper 21) to have the agreement treated as business confidential
`
`information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). The parties
`
`also filed a true copy of their written agreement. Ex. 1011. The parties
`
`contend that termination of this proceeding is appropriate, representing that
`
`they “have settled their disputes via a written agreement.” Paper 20, 2.
`
`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.” Further,
`
`under 35 U.S.C. § 317(b), “[a]ny agreement or understanding between the
`
`patent owner and a petitioner, including any collateral agreements referred to
`
`in such agreement or understanding, made in connection with, or in
`
`contemplation of, the termination of an inter partes review under this section
`
`shall be in writing and a true copy of such agreement or understanding shall
`
`be filed in the Office before the termination.”
`
`As the parties have filed their written agreement and jointly requested
`
`termination, we determine that it is appropriate to terminate this proceeding
`
`without rendering a final written decision under 35 U.S.C. § 318(a) as to the
`
`patentability of claims 12, 13, 16–22, and 24–29 of the ’550 patent, which
`
`are all the claims on which trial has been instituted (Paper 10, 24). See 35
`
`U.S.C. § 317; 37 C.F.R. §§ 42.72, 42.74.
`
`
`
`
`
`
`
`2
`
`
`
`IPR2016-00100
`Patent 7,590,550 B2
`
`II. ORDER
`
`Accordingly, it is:
`
`ORDERED that the parties’ Joint Request that their agreement
`
`(Ex. 1011) be treated as business confidential information under 35 U.S.C.
`
`§ 317(b) and 37 C.F.R. § 42.74(c) is GRANTED; and
`
`ORDERED that the parties’ Joint Motion to Terminate this
`
`proceeding is GRANTED, and this proceeding is hereby terminated.
`
`3
`
`
`
`PETITIONER:
`
`Michael Solomita
`msolomita@sheppardmullin.com
`
`Jesse Salen
`jsalen@sheppardmullin.com
`
`
`
`PATENT OWNER:
`
`Walter Renner
`IPR22569-0093IP2@fr.com
`
`Christina McDonough
`PTABInbound@fr.com
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