`Date: May 11, 2017
`
`
`
`
`
`
`
`
`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 IPR2016-01847
`Patent 8,467,844 B2
`____________
`
`
`
`Before MEREDITH C. PETRAVICK, MITCHELL G. WEATHERLY, and
`MICHAEL L. WOODS, Administrative Patent Judges.
`
`PETRAVICK, 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
`
`
`
`
`
`
`
`IPR2016-01847
`Patent 8,467,844 B2
`
`
`
`I. Introduction
`We instituted trial on March 23, 2016. Paper 14. 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 17 (“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. 2026, “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 18 (“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 dispute
`in this inter partes review and all disputes between the parties relating to the
`’844 patent. Paper 17, 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
`
`
`
`
`
`
`IPR2016-01847
`Patent 8,467,844 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, Neurovision has not filed a Patent
`Owner’s Response, and such a response is not due until June 21, 2017.
`Paper 16, 6. The panel has not decided the merits of the challenges
`presented in the Petition. 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 17) is granted,
`
`and this proceeding is hereby terminated; and
`
`FURTHER ORDERED that the Joint Request to Keep Separate
`(Paper 18) is also granted, and the Settlement Agreement (Ex. 2026) will be
`treated as business confidential information and kept separate from the files
`of the ’844 patent under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`
`
`
`
`
`3
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-01847
`Patent 8,467,844 B2
`
`For PETITIONER:
`
`Justin J. Oliver
`Jason Dorsky
`FITZPATRICK, CELLA, HARPER & SCINTO
`joliver@fchs.com
`Medtronic894IPR@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
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
