`Entered: December 16, 2016
`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TIANJIN SHUANGRONG PAPER PRODUCTS CO., LTD. AND
`SHUANG RONG AMERICA, LLC,
`Petitioner,
`
`v.
`
`KISS NAIL PRODUCTS, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00371
`Patent 8,561,619 B1
`____________
`
`Before JOSIAH C. COCKS, MICHAEL W. KIM, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`
`MAYBERRY, Administrative Patent Judge.
`
`
`DECISION
`Termination of the Proceeding
`35 U.S.C. § 317(a) and 37 C.F.R. § 42.72
`
`
`
`IPR2016-00371
`Patent 8,561,619 B1
`
`
`On December 13, 2016, Petitioners, Tianjin Shuangrong Paper
`Products Co., Ltd. and Shuang Rong America, LLC, and Patent Owner, Kiss
`Nail Products, Inc., (collectively, “the Parties”) filed a joint motion to
`terminate this inter partes review (“IPR”) involving U.S. Patent No.
`8,561,619 B1 (“the ’619 patent”). Paper 34 (the “Joint Motion to
`Terminate”); see 35 U.S.C. § 317(b); 37 C.F.R. § 42.72. The Board
`authorized this motion in an email communication to the Parties on
`December 12, 2016. As background, Petitioner filed a petition for inter
`partes review of the ’619 patent on December 29, 2015. Paper 1 (the
`“Petition”). The Petition names Tianjin Shuangrong Paper Products Co.,
`Ltd. and Shuang Rong America, LLC as the real parties-in-interest. Id. at 2.
`Patent Owner’s Mandatory Notices identifies Kiss Nail Products, Inc. as the
`patent owner of the ’619 patent. Paper 6, 1. We instituted trial on June 10,
`2016 for claims 1–5 of the ’619 patent. Paper 13, 28.
`Along with the Joint Motion to Terminate, the Parties filed a true and
`correct copy of their written settlement agreement between all of the Parties
`covering the ’619 patent (Exhibit 2013—the “Settlement Agreement”), as
`well as a joint motion (Paper 35) to have the Settlement Agreement treated
`as business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(c). The Parties represent in their Joint Motion to Terminate that the
`Settlement Agreement resolves the Parties’ dispute in pending district court
`litigation in the Southern District of New York involving the ’619 patent and
`that “[n]o litigation or proceeding involving U.S. Patent No. 8,561,619 . . . is
`contemplated in the foreseeable future.” Paper 34, 2. Further, the Parties
`certify that, with respect to the Settlement Agreement, “[t]here are no
`collateral agreements referred to in the Parties’ Settlement Agreement, and
`
`2
`
`
`
`IPR2016-00371
`Patent 8,561,619 B1
`
`there are no other collateral agreements or understandings made in
`connection with, or in contemplation of, terminating this IPR.” Id.
`The Parties are reminded that the Board is not a party to the
`settlement, and may identify independently any question of patentability.
`37 C.F.R. § 42.74(a). Generally, however, 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. 48756, 48768 (Aug.
`14, 2012). Petitioner has not yet filed a reply to Patent Owner’s Response
`(Paper 29) and neither party has requested oral hearing. Under the
`circumstances, based on the record before us, the Board determines that it is
`appropriate to terminate this proceeding without rendering a final written
`decision. See 37 C.F.R. § 42.72.
`
`
`ORDER
`In consideration of the foregoing, it is
`ORDERED that, as was timely requested by the Parties, the
`Settlement Agreement (Exhibit 2013) will be treated as business confidential
`information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), and be kept
`separate from the file of U.S. Patent No. 8,561,619 B1 and made available
`only to Federal Government agencies on written request, or to any person on
`a showing of good cause; and
`FURTHER ORDERED that the Joint Motion to Terminate this
`proceeding is granted and this proceeding is hereby terminated.
`
`
`
`
`
`3
`
`
`
`
`
`IPR2016-00371
`Patent 8,561,619 B1
`
`PETITIONER:
`
`For PETITIONER:
`S. Art Hasan
`Kyle W. Kellar
`LEWIS ROCA ROTHGERBER CHRISTIE LLP
`ahasan@lrrc.com
`pto@lrrc.com
`
`For PATENT OWNER:
`Geoffrey Gavin
`George Phillips
`JONES DAY
`ggavin@jonesday.com
`gphillips@jonesday.com
`
`
`
`
`
`4
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