IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`OMNIACTIVE HEALTH TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`KEMIN INDUSTRIES, INC.
`Patent Owner
`
`Case No. IPR2017-00306
`Patent No. 9,226,940
`
`JOINT MOTION TO TERMINATE PURSUANT TO
`35 U.S.C. § 317 AND 37 C.F.R. § 42.74
`
`
`
`
`
`
`
`
`
`
`
` DC: 6299243-2
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`OMNIACTIVE HEALTH TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`KEMIN INDUSTRIES, INC.
`Patent Owner
`
`Case No. IPR2017-00306
`Patent No. 9,226,940
`
`JOINT MOTION TO TERMINATE PURSUANT TO
`35 U.S.C. § 317 AND 37 C.F.R. § 42.74
`
`
`
`
`
`
`
`
`
`
`
` DC: 6299243-2
`
`
`
`Case No. IPR2017-00306
`
`Pursuant to 35 U.S.C. § 317, 37 C.F.R. §§ 42.72 and 42.74, and the Board’s
`
`authorization of February 7, 2017, Petitioner OmniActive Health Technologies,
`
`Inc. and Patent Owner Kemin Industries, Inc. jointly move to terminate the present
`
`inter partes review proceeding in light of the parties’ settlement of their dispute
`
`insofar as it relates to U.S. Patent No. 9,226,940 (“the ’940 patent”). The parties
`
`are filing, concurrently herewith, a true and complete copy of their written
`
`Settlement and License Agreement (“Settlement Agreement”) (Confidential
`
`Exhibit 1032) in connection with this matter as required by the statute. The
`
`Settlement Agreement completely settles the parties’ controversy and their dispute
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`relating to the ’940 patent as between Patent Owner and OmniActive Health
`
`Technologies, Inc., the Petitioner and real party-in-interest in the present
`
`proceeding, who was the plaintiff in the U.S. district court litigation captioned
`
`OmniActive Health Technologies, Inc. v. Kemin Industries, Inc., 2016-cv-04988-
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`CCC-JBC (D.N.J. filed August 15, 2016), and a repondent in an investigation
`
`before the U.S. International Trade Commission (ITC) captioned Certain Food
`
`Supplements and Vitamins, Including Ocular Antioxidants and Components
`
`Thereof and Products Containing the Same, Investigation No. 337-TA-1027,
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`(“ITC Investigation”). In the ITC Investigation, the parties filed a Joint Motion to
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`1
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`Case No. IPR2017-00306
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`Terminate the Investigation Based on Settlement on December 13, 2016 (Exhibit
`
`1033),1 and OmniActive filed a Notice of Voluntary Dismissal in the district court
`
`litigation on December 12, 2016 (Exhibit 1034). The ITC issued an Initial
`
`Determination to Terminate the Investigation Based on Settlement on December
`
`28, 2016 (Exhibit 1035). The District Court issued an Order dismissing the civil
`
`action on December 16, 2016 (Exhibit 1036).
`
`The parties further jointly certify that there are no other agreements or
`
`understandings, oral or written, between Patent Owner and Petitioner, including
`
`any collateral agreements, made in connection with, or in contemplation of, the
`
`termination of the present proceeding as set forth in 35 U.S.C. § 317(b).
`
`The parties request that the Settlement Agreement (Confidential Exhibit
`
`1030) be treated as business confidential information and kept separate from the
`
`file of the ’940 patent. A joint request to treat the Settlement Agreement as
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`business confidential information kept separate from the file of the involved patent
`
`pursuant to 35 U.S.C. § 317(b) is being filed concurrently herewith.
`
`
`1 Highly Confidential Exhibit B cited in Exhibit 1033 is the same document as the
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`“Settlement Agreement” cited in this paper as Confidential Exhibit 1032.
`
`2
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`
`
`Case No. IPR2017-00306
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`Termination with Respect to Inter Partes Review Proceeding
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`A joint motion to terminate generally “must (1) include a brief explanation
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`as to why termination is appropriate; (2) identify all parties in any related litigation
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`involving the patents at issue; (3) identify any related proceedings currently before
`
`the Office, and (4) discuss specifically the current status of each such related
`
`litigation or proceeding with respect to each party to the litigation or proceeding.”
`
`Heartland Tanning, Inc. v. Sunless, Inc., IPR2014-00018, Paper No. 26, at *2
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`(P.T.A.B. July 28, 2014). Each element is addressed below:
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`As for requirement (1), termination is appropriate in this proceeding because
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`the parties have settled their dispute with respect to the ’940 patent, and have
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`agreed to terminate this inter partes review. The applicable statute, 35 U.S.C.
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`§ 317(a), provides that an inter partes review proceeding “shall be terminated with
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`respect to any petitioner upon the joint request of the petitioner and the patent
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`owner, unless the Office has decided the merits of the proceeding before the
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`request for termination is filed.” In this case, the inter partes review has not yet
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`been instituted. The Patent Owner’s Preliminary Response to the petition has not
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`yet been filed, and the Office has made no decision on the merits. Moreover, as
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`recognized by the rules of practice before the Board:
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`There are strong public policy reasons to favor settlement between the
`parties to a proceeding. The Board will be available to facilitate
`settlement discussions, and where appropriate, may require a
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`3
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`
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`Case No. IPR2017-00306
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`settlement discussion as part of the proceeding. The Board expects
`that a proceeding will terminate after the filing of a settlement
`agreement, unless the Board has already decided the merits of the
`proceeding.
`
`Patent Office Trial Practice Guide, Fed. Register, Vol. 77, No. 157 at 48768 (Aug.
`
`14, 2012). Moreover, no public interest or other factors militate against
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`termination of this proceeding.
`
`As for requirements (2) and (4), the table below identifies parties in district
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`court litigations that involve or involved the ’940 patent, and discusses the current
`
`status of these related litigations with respect to each party to the litigation. See
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`Heartland Tanning, Inc., Paper No. 26, at *2.
`
`Case Caption
`
`Current Status of Each
`
`Related Litigation With
`
`Respect to Each Party to the
`
`Litigation or Proceeding
`
`OmniActive Health Technologies, Inc. v. Kemin
`
`Dismissed in view of Notice of
`
`Industries, Inc., 2016-cv-04988-CCC-JBC,
`
`Voluntary Dismissal by Order
`
`United States District Court for the District of
`
`dated December 16, 2016.
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`New Jersey (filed on August 15, 2016)
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`
`
`4
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`
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`Case No. IPR2017-00306
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`As for requirements (3) and (4), there are no related Inter Partes Review
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`proceedings for the ’940 patent currently before the U.S. Patent & Trademark
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`Office:
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`Finally, as discussed above, the Settlement Agreement fully resolves all
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`litigation and proceedings between the parties to this IPR proceeding relating to the
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`’940 patent. The parties filed a Joint Motion to Terminate the Investigation Based
`
`On Settlement on December 13, 2016 (Exhibit 1031) for ITC Investigation No.
`
`337-TA-1027, and OmniActive filed a Notice of Voluntary Dismissal in the
`
`district court litigation involving Petitioner OmniActive Health Technologies, Inc.
`
`on December 12, 2016 (Exhibit 1032). The ITC issued an Initial Determination to
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`Terminate the Investigation Based on Settlement on December 28, 2016 (Exhibit
`
`1033). The District Court issued an Order dismissing the civil action on December
`
`16, 2016 (Exhibit 1034).
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`
`
`
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`5
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`
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`Case No. IPR2017-00306
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`For the foregoing reasons, the parties jointly and respectfully request that the
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`instant proceeding be terminated.
`
`Date: February 9, 2017
`
`Respectfully submitted,
`
`
`
`Jay 1. Alexander
`Registration No. 32,678
`COVINGTON & BURLING LLP
`
`One CityCenter, 850 Tenth Street, NW
`Washington, DC 20001
`(202) 662-6000
`Attorneys for Petitioner
`
`Allison E. Kemdt
`
`Registration No.: 61,692
`Davis, Brown, Koehn, Shors & Roberts,
`P.C.
`
`The Davis Brown Tower
`
`215 10th Street, Ste. 1300
`
`Des Moines, IA 50309
`Telephone: (515) 288-2500
`Attorneys for Patent Owner
`
`
`
`Case No. IPR2017-00306
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6, I hereby certify that on this 10th day of
`
`February 2017, the foregoing Joint Motion to Terminate Pursuant to 35 U.S.C.
`
`§ 317 and 37 C.F.R. § 42.74, was served via email by agreement of the parties on
`
`the following counsel of record for Patent Owner:
`
`Allison E. Kemdt
`
`Davis, Brown, Koehn, Shors & Roberts, P.C.
`allisonkemdt@daVisbrown1aw.com
`
`Date: February 10,2017
`
`0/ £-
`
`nder, E q.
`Jayl, "Al
`Regigtration No.: 32,678
`
`
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