`571-272-7822
`
`
`
`
`
`
`
`
`
`
` Paper No. 11
`
`
`Entered: February 15, 2017
`
`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 IPR2017-00306
`Patent 9,226,940 B2
`
`_______________
`
`
`Before LORA M. GREEN, BRIAN P. MURPHY, and
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`
`SAWERT, Administrative Patent Judge.
`
`
`DECISION
`Granting Joint Motion to Terminate Due to Settlement Prior to Institution
`37 C.F.R. § 42.72, 42.74
`
`
`
`On February 10, 2017, the parties filed a joint motion to terminate the
`instant proceeding (Paper 8), accompanied by a true copy of a settlement
`agreement (Ex. 1032) and a joint request to treat the settlement agreement as
`business confidential information, to be kept separate from the patent file,
`pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (Paper 9).
`
`
`
`
`
`
`
`IPR2017-00306
`Patent 9,226,940 B2
`
`
`
`The parties indicate in their joint motion to terminate that they have
`reached an agreement resolving their dispute involving U.S. Patent No.
`9,226,940 B2 (“the ’940 patent”). Paper 8, 1. Specifically, the parties state
`that they have entered into a Settlement Agreement that “completely settles
`the parties’ controversy and their dispute 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.” Id. The
`parties also state that the Settlement Agreement settled a related U.S. district
`court litigation (i.e., OmniActive Health Technologies, Inc. v. Kemin
`Industries, Inc., Case No. 2016-cv-04988-CCC-JBC (D.N.J.)), and a related
`investigation at the U.S. International Trade Commission (ITC) (i.e., Certain
`Food Supplements and Vitamins, Including Ocular Antioxidants and
`Components Thereof and Products Containing the Same, Investigation No.
`337-TA-1027). Id. The parties state that the related district court litigation
`has been dismissed, id. at 2 (citing Ex. 1036), and that the related ITC
`investigation has been initially terminated, id. (citing Ex. 1035).
`This proceeding is in a preliminary stage. Patent Owner has not filed
`a Preliminary Response, and no decision on whether to institute trial has
`been made. Under the circumstances presented here, we determine that it is
`appropriate to terminate this preliminary proceeding with respect to both
`Petitioner and Patent Owner. Accordingly, we grant the parties’ joint
`motion to terminate. We also grant the parties’ joint request to treat the
`settlement agreement as business confidential information, to be kept
`separate from the patent file.
`
`2
`
`
`
`
`
`IPR2017-00306
`Patent 9,226,940 B2
`
`
`
`Accordingly, it is
`ORDERED that the joint request to treat the Settlement Agreement as
`business confidential information, to be kept separate from the patent file, is
`GRANTED;
`
`FURTHER ORDERED that the joint motion to terminate the
`proceedings is GRANTED; and
`
`FURTHER ORDERED that the instant proceeding is TERMINATED.
`
`
`
`
`
`PETITIONER:
`
`David A. Garr
`Jay I. Alexander
`COVINGTON & BURLING LLP
`dgarr@cov.com
`jalexander@cov.com
`
`PATENT OWNER:
`
`Allison E. Kerndt
`DAVIS, BROWN, KOEHN, SHORS & ROBERTS, P.C.
`Allison.Kerndt@davisbrownlaw.com
`
`3
`
`
`
`
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