`Date: May 10, 2017
`
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`
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`Trials@uspto.gov
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MEDTRONIC XOMED, INC.,
`Petitioner,
`
`v.
`
`NEUROVISION MEDICAL PRODUCTS, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01406
`Patent 8,634,894 B2
`____________
`
`
`
`Before MEREDITH C. PETRAVICK, MITCHELL G. WEATHERLY, and
`MICHAEL L. WOODS, Administrative Patent Judges.
`
`WOODS, Administrative Patent Judge.
`
`JUDGMENT
`Termination Due to Settlement after Institution of Inter Partes Review
`35 U.S.C. § 317 and 37 C.F.R. § 42.74
`
`
`
`
`
`IPR2016-01406
`Patent 8,634,894 B2
`
`
`
`
`
`I. Introduction
`We instituted trial on December 29, 2016. Paper 12. On
`May 8, 2017, Petitioner, Medtronic Xomed, Inc. (“Medtronic”), and Patent
`Owner, Neurovision Medical Products, Inc. (“Neurovision”), (collectively
`referred to as “the parties”), filed a Joint Motion to Terminate Inter Partes
`Review under 35 U.S.C. § 317(a). Paper 30 (“Joint Motion to Terminate”).1
`Along with the Joint Motion to Terminate, the parties filed a true copy of a
`Settlement and License Agreement (Ex. 2058, “Settlement Agreement”), as
`well as a Joint Request to Keep Separate Pursuant to 35 U.S.C. § 317(b) and
`37 C.F.R. § 42.74(c) (Paper 31 (“Joint Request to Keep Separate”)).
`
`II. Discussion
`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. 48,756, 48,768
`(Aug. 14, 2012).
`In the Joint Motion to Terminate, the parties represent that they have
`settled their dispute and have reached an agreement “that resolves the
`disputes in the . . . inter partes reviews and all disputes between” the parties
`relating to the ’894 patent. Paper 30, 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
`
`
`1 Filing of the Joint Motion to Terminate was authorized in e-mail
`correspondence from Board personnel on May 8, 2017.
`2
`
`
`
`
`
`
`IPR2016-01406
`Patent 8,634,894 B2
`
`
`request of the petitioner and patent owner, unless the Office has decided the
`merits of the proceeding before the request for termination is filed.”
`At this stage of the proceeding, Medtronic has not filed a Petitioner
`Reply, and such a reply is not due until July 12, 2017. Paper 13, 7
`(identifying Petition’s Reply as due by Due Date 2); Paper 28, 2 (stipulating
`new Due Date 2). Additionally, the panel has not decided the merits of the
`challenges presented in the Petition and Patent Owner Response. Upon
`consideration of the circumstances of this case, the panel has determined to
`terminate this inter partes review as to both Medtronic and Neurovision
`without rendering a final written decision.
`
`III. Orders
`
`It is
`
`ORDERED that the Joint Motion to Terminate (Paper 30) is granted,
`
`and this proceeding is hereby terminated; and
`
`FURTHER ORDERED that the Joint Request to Keep Separate
`(Paper 31) is also granted, and the Settlement Agreement (Ex. 2058) will be
`treated as business confidential information and kept separate from the files
`of the ’894 patent under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`
`
`
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`3
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`
`IPR2016-01406
`Patent 8,634,894 B2
`
`For PETITIONER:
`
`Justin Oliver
`Jason Dorsky
`FITZPATRICK, CELLA, HARPER & SCINTO
`Medtronic894IPR@fchs.com
`jdorsky@fchs.com
`
`
`
`For PATENT OWNER:
`
`Neil A. Rubin
`Kent Shum
`C. Jay Chung
`RUSS AUGUST & KABAT
`nrubin@raklaw.com
`kshum@raklaw.com
`jchung@raklaw.com
`
`
`4
`
`
`
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