`Filed: January 10, 2017
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`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`STELLAR ENERGY AMERICAS, INC.,
`Petitioner,
`
`v.
`
`TAS ENERGY, INC.,
`Patent Owner.
`____________
`
`Cases IPR2016-00426
`Patent RE44,079 E
`____________
`
`
`Before JOSIAH C. COCKS, MICHAEL J. FITZPATRICK, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`ORDER
`Joint Motion to Terminate Inter Partes Review
`35 U.S.C. § 317 and 37 C.F.R. § 42.72
`
`
`
`
`
`IPR2016-00426
`Patent RE44,079 E
`
`
`
`I. Introduction
`
`
`
`On December 6, 2016, Petitioner, Stellar Energy Americas, Inc.
`
`(“SEA”), and Patent Owner, TAS Energy, Inc. (“TAS”) (collectively the
`
`“parties”) filed a Joint Motion to Terminate this inter partes review. Paper
`
`11 (“Joint Motion to Terminate”). Along with the Joint Motion to Terminate,
`
`the parties a true copy of a written settlement agreement (Ex. 1235), as well
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`as a joint request to have their settlement agreement treated as business
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`confidential information under 35 U.S.C. § 317 and 37 C.F.R. § 42.74(c)
`
`(Paper 12).
`
`II. Discussion
`
`The parties are reminded that the Board is not a party to the
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`settlement, and may identify independently any question of patentability. 37
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`C.F.R. § 42.74(a). Generally, however, the Board expects that a proceeding
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`will terminate after the filing of a settlement agreement. See, e.g., Office
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`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012).
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`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this
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`chapter shall be terminated with respect to any petitioner upon the joint
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`request of the petitioner and the patent owner, unless the Office has decided
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`the merits of the proceeding before the request for termination is filed.” The
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`requirement for terminating review with respect to SEA is met.
`
`
`
`Furthermore, under 35 U.S.C. § 317(a), “[i]f no petitioner remains in
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`the inter partes review, the Office may terminate the review or proceed to a
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`final written decision under section 318(a).” SEA is the sole petitioner in
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`this inter partes review, such that termination with respect to SEA means
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`that no petitioner remains in the proceeding. The Board, thus, has discretion
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`to terminate this review with respect to TAS.
`
`2
`
`
`
`
`IPR2016-00426
`Patent RE44,079 E
`
`
`
`The panel entered a Decision to institute trial on July 1, 2016 (Paper
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`
`
`7). TAS has filed no Patent Owner Response. Thus, briefing is not
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`complete in this proceeding. The parties also state that they “have settled
`
`their dispute,” and represent the following:
`
`On December 2, 2016, the parties filed dismissal notices
`in the related district court litigations TAS Energy Inc. v. Stellar
`Energy Americas, Inc., et al., Case No. 8:14-cv-3145-T-30MAP
`(M.D. Fla.) and TAS Energy Inc. v. Direct Energy, Inc., et al.,
`Case No. 4:14-cv-512 (S.D. Tex.), and the parties are
`concurrently filing joint motions to terminate related Inter Partes
`Reviews IPR2016-00294, IPR2016-00335, IPR2016-00425, and
`IPR2016-00426. In addition, the parties moved to dismiss Patent
`Owner's appeals to the United States Court of Appeals for the
`Federal Circuit of the final written decisions in IPR 2015-00882
`and IPR 2015-00886. The Federal Circuit granted that motion
`and dismissed the appeals on December 5, 2016. The parties are
`not aware of any other related pending litigation involving the
`subject patent. In addition, the parties are not contemplating any
`litigation or proceeding involving the subject patent in the
`foreseeable future.
`
`Joint Motion to Terminate 1–2.
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`
`
`Upon consideration of the circumstances of this case, the panel has
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`determined to terminate this inter partes review as to both SEA and TAS
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`without rendering a final written decision.
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`It is
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`III. Order
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`ORDERED that the Joint Motion to Terminate this proceeding in
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`
`
`
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`(Paper 11) is granted, and this proceeding is hereby terminated; and
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`
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`FURTHER ORDERED that, as was requested timely by the parties
`
`(Paper 12), the settlement agreement and license agreement (Exhibit 1235)
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`3
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`
`
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`IPR2016-00426
`Patent RE44,079 E
`
`
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`will be treated as business confidential information under 35 U.S.C. § 317(b)
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`and 37 C.F.R. § 42.74(c).
`
`4
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`
`
`
`
`
`
`
`For PETITIONER:
`
`Steven Schwarz
`Tamatane Aga
`VENABLE LLP
`sjschwarz@venable.com
`tjaga@venable.com
`
`For PATENT OWNER:
`
`Jonathan Pierce
`Derek V. Forinash
`PORTER HEDGES, LLP
`Jpierce@porterhedges.com
`dforinash@porterhedges.com
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