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`_____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________________
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`Solenis LLC
`
`Petitioner,
`
`v.
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`Ecolab USA Inc.,
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`Patent Owner
`
`_____________________
`
`Inter Partes Review No.: IPR2016-1281
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`U.S. Patent No. 8,465,623
`
`
`
`JOINT MOTION TO DISMISS PURSUANT TO 37 C.F.R. § 42.72
`
`
`
`
`
`
`
`
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`1. INTRODUCTION AND STATEMENT OF PRECISE RELIEF
`REQUESTED
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`Patent Owner Ecolab USA Inc. and Petitioner Solenis LLC hereby jointly move
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`to terminate this inter partes review of 8,465,623, as the parties have reached a
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`settlement agreement. This agreement is being filed herewith as Exhibit 1032,
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`pursuant to 35 U.S.C. § 317(b). There are no other agreements, oral or written,
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`between the parties made in connection with, or in contemplation of, the
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`termination of each proceeding. The Board should therefore terminate this trial
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`without rendering a Final Written Decision pursuant to 37 C.F.R. § 42.72 in order
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`to conserve administrative resources. The parties were authorized to file this
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`motion on August 23, 2017.
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`2. STATEMENT OF REASONS FOR THE RELIEF REQUESTED
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`On a petition filed by Solenis, the Board instituted an IPR on 8,465,623, as well
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`as on the patent’s parent, U.S. Patent No. 8,088,250. Paper 33. As described in
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`the parties’ mandatory notices, this IPR relates to an underlying litigation in the
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`Northern District of Illinois between Patent Owner Ecolab USA Inc, along with its
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`related company Nalco Company, and Petitioner Solenis LLC. The parties have
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`engaged in settlement discussions over the past months and reached an agreement
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`to settle the underlying district court litigation. As such, the parties seek
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`
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`termination of this trial without a Final Written Decision to conserve their
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`resources as well as those of the Board.
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` The Board has authority to terminate this trial without rendering a Final
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`Written Decision. 37 C.F.R. § 42.72. Termination in this circumstance would
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`conserve administrative resources, and would align with 37 C.F.R. § 42.1(b)’s
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`instruction that “[t]his part shall be construed to secure the just, speedy, and
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`inexpensive resolution of every proceeding.”
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`III. CONCLUSION
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`For the forgoing reasons, the parties respectfully request that the Board
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`terminate this trial on the 8,465,623 without rendering a Final Written Decision
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`pursuant to 37 C.F.R. § 42.72.
`
`
`
`
`
`
`
`Date: August 24, 2017
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`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`/s/Michael P. Chu
`Michael P. Chu
`Kevin P. Shortsle
`McDermott Will & Emery LLP
`444 West Lake Street, Suite 4000
`Chicago, Illinois 60606
`Phone: 312.372.2000
`Fax: 312.984.7700
`mchu@mwe.com
`kshortsle@mwe.com
`Attorneys for Petitioner
`
`/s/Anthony R. Zeuli
`Anthony R. Zeuli, Reg. No. 45,255
`Merchant & Gould P.C.
`3200 IDS Center
`80 South 8th Street
`Minneapolis, MN 55402
`Telephone: (612) 371-5208
`Fax: (612) 332-9081
`Email: tzeuli@merchantgould.com
`NalcoIPR@merchantgould.com
`Attorney for Patent Owner
`
`
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