`571-272-7822
`
` Paper No. 16
`Entered: June 8, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ACTA MEDICAL L.L.C.,
`Petitioner,
`
`v.
`
`
`
`CURLIN MEDICAL INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00324
`Patent 6,164,921
`____________
`
`
`
`Before BEVERLY M. BUNTING and AMANDA F. WIEKER,
`Administrative Patent Judges.
`
`BUNTING, Administrative Patent Judge.
`
`JUDGMENT
`Termination of the Proceeding
`35 U.S.C. § 317(a) and 37 C.F.R. § 42.72
`
`
`
`
`
`
`
`
`
`IPR2017-00324
`Patent 6,164,921
`
`
`ACTA Medical LLC, (“Petitioner”) filed a Petition requesting an inter
`partes review of claims 15–34 (“the challenged claims”) of U.S. Patent No.
`6,164,921 (Ex. 1001, “the ’921 patent”). Paper 1 (“Pet.”). Curlin Medical
`Inc., (“Patent Owner”), the assignee of the ’921 patent, filed a Preliminary
`Response to the Petition. Paper 9 (“Prelim. Resp.”). In an email to the
`Board dated June 5, 2017, Petitioner requested leave to file a motion for
`adverse judgement under 37 C.F.R. § 42.73(b)(4). During a June 6, 2017
`telephone conference between the parties and Judges Bunting and Wieker,
`the parties indicated that they had settled their dispute. Because the parties
`have settled their dispute, we granted authorization to file the present joint
`motion to terminate this proceeding pursuant to a settlement agreement
`under 37 C.F.R. § 42.74.
`On June 7, 2017, the parties filed this joint motion to terminate the
`present proceeding pursuant to a settlement agreement. Paper 13. The
`parties also filed a true copy of their written settlement agreement, made in
`connection with the termination of this proceeding, in accordance with 35
`U.S.C. § 317(b) and 37 C.F.R. § 42.72. Ex. 2002. Additionally, the parties
`submitted a joint request to have their settlement agreement treated as
`confidential business information under 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(c). Paper 14.
`The parties submit that termination is appropriate because the parties
`have settled their dispute and have reached agreement to terminate this
`proceeding. Paper 13, 1. The parties represent that this settlement
`agreement ends all disputes as to this patent, including the pending district
`court lawsuit. Id.
`
`
`
`2
`
`
`
`IPR2017-00324
`Patent 6,164,921
`
`
`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. 48756, 48768 (Aug. 14, 2012).
`We note that this proceeding is still in the preliminary stage, and the Board
`has not yet issued a decision whether to institute an inter partes review. 1
`Under the circumstances, based on the record before us, we determine
`that it is appropriate to terminate this proceeding with respect to both
`Petitioner and Patent Owner. At this juncture, termination is suitable
`because it promotes efficiency and minimizes unnecessary costs. Based on
`the facts, it is appropriate to terminate this proceeding without rendering a
`final written decision. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72.
`
`
`ORDER
`In consideration of the foregoing, it is
`
`ORDERED that the parties’ joint request that the settlement
`
`agreement (Exhibit 2002) be treated as business confidential information
`under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), to be kept separate from
`the patent file in this proceeding, is GRANTED;
`
`FURTHER ORDERED that the joint motion to terminate IPR2017-
`00324 is GRANTED; and
`
`FURTHER ORDERED that this proceeding is TERMINATED.
`
`
`1 We remind the parties that the statutory deadline for institution of trial is
`June 13, 2017.
`
`
`
`3
`
`
`
`IPR2017-00324
`Patent 6,164,921
`
`PETITIONER:
`
`Donald McPhail
`Kyle Vos Strache
`COZEN O’CONNOR
`dmcphail@cozen.com
`kvosstrache@cozen.com
`
`
`
`
`PATENT OWNER:
`
`Jason E. Stach
`Brandon Bludau
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
`Jason.stach@finnegan.com
`Brandon.bludau@finnegan.com
`
`George Snyder
`Charles Rauch
`HODGSON RUSS LLP
`IPDocketing@hodgsonruss.com
`gsnyder@hodgsonruss.com
`crauch@hodgsonruss.com
`
`
`
`4
`
`
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