Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`
` Paper No. 55
` Filed: September 26, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SMITH & NEPHEW, INC.,
`Petitioner,
`
`v.
`
`CONFORMIS, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00544 (Patent 7,534,263 B2)
`Case IPR2017-00778 (Patent 8,062,302 B2)
`Case IPR2017-00779 (Patent 8,062,302 B2)
`Case IPR2017-00780 (Patent 8,062,302 B2)1
`____________
`
`
`
`Before PATRICK R. SCANLON, JAMES A. WORTH, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`SCANLON, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Termination of Trial
`37 C.F.R. §§ 42.72 and 42.73
`
`
`1 We exercise our discretion to issue a common paper in each proceeding
`with a joint caption. The parties are not authorized to do the same.
`
`
`571.272.7822
`
`
`
`
`
`
` Paper No. 55
` Filed: September 26, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SMITH & NEPHEW, INC.,
`Petitioner,
`
`v.
`
`CONFORMIS, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00544 (Patent 7,534,263 B2)
`Case IPR2017-00778 (Patent 8,062,302 B2)
`Case IPR2017-00779 (Patent 8,062,302 B2)
`Case IPR2017-00780 (Patent 8,062,302 B2)1
`____________
`
`
`
`Before PATRICK R. SCANLON, JAMES A. WORTH, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`SCANLON, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Termination of Trial
`37 C.F.R. §§ 42.72 and 42.73
`
`
`1 We exercise our discretion to issue a common paper in each proceeding
`with a joint caption. The parties are not authorized to do the same.
`
`
`
`Case IPR2017-00544 (Patent 7,534,263 B2)
`Case IPR2017-00778 (Patent 8,062,302 B2)
`Case IPR2017-00779 (Patent 8,062,302 B2)
`Case IPR2017-00780 (Patent 8,062,302 B2)
`
`
`On September 20, 2018, pursuant to our authorization, Petitioner,
`
`Smith & Nephew, Inc. (“Smith & Nephew”), and Patent Owner, Conformis,
`
`Inc. (“Conformis”), filed a Joint Motion to Terminate in each of these
`
`proceedings. IPR2017-00544, Paper 51; IPR2017-00778, Paper 52;
`
`IPR2017-00779, Paper 51; and IPR2017-00780, Paper 51. With each Joint
`
`Motion, the parties filed a copy of their written settlement agreement
`
`covering various matters, including those involving the patents at issue in
`
`these proceedings. Ex. 2037.2 The parties concurrently filed a Joint Request
`
`to have the settlement agreement treated as confidential business information
`
`under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). IPR2017-00544,
`
`Paper 52; IPR2017-00778, Paper 53; IPR2017-00779, Paper 52; and
`
`IPR2017-00780, Paper 52.
`
`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
`
`request of the petitioner and patent owner, unless the Office has decided the
`
`merits of the proceeding before the request for termination is filed.” In this
`
`proceeding, we have not yet reached a decision on the merits with respect to
`
`the patentability of any involved claim. Accordingly, we must terminate the
`
`reviews with respect to Smith & Nephew, as Petitioner.
`
`Furthermore, “[i]f no petitioner remains in the inter partes review, the
`
`Office may terminate the review or proceed to a final written decision under
`
`
`2 The written settlement agreement is Exhibit 2037 in each of these
`proceedings.
`
`
`
`
`2
`
`
`
`Case IPR2017-00544 (Patent 7,534,263 B2)
`Case IPR2017-00778 (Patent 8,062,302 B2)
`Case IPR2017-00779 (Patent 8,062,302 B2)
`Case IPR2017-00780 (Patent 8,062,302 B2)
`
`section 318(a).” 35 U.S.C. § 317(a). We, therefore, have discretion to
`
`terminate these reviews with respect to Conformis.
`
`In their Joint Motions, the parties assert they have settled their
`
`disputes involving U.S. Patent 7,534,263 B2 (at issue in IPR2017-00544)
`
`and U.S. Patent 8,062,302 B2 (at issue in IPR2017-00778, IPR2017-00779,
`
`and IPR2017-00780), and have agreed to request termination of these inter
`
`partes review proceedings. IPR2017-00544, Paper 51, 1; IPR2017-00778,
`
`Paper 52, 1; IPR2017-00779, Paper 51, 1; and IPR2017-00780, Paper 51, 1.
`
`The parties represent that Exhibit 2037, filed in each proceeding, is a true
`
`and correct copy of their written settlement agreement and there are no
`
`collateral agreements made in connection with, or in contemplation of, the
`
`termination of these proceedings. Id. The parties contend that termination
`
`of these proceedings is appropriate because the Board has not yet decided
`
`the merits and the Joint Motions were filed “well in advance” of the
`
`extended deadlines3 for issuing Final Written Decisions. IPR2017-00544,
`
`Paper 51, 4; IPR2017-00778, Paper 52, 4; IPR2017-00779, Paper 51, 4; and
`
`IPR2017-00780, Paper 51, 4.
`
`There are strong public policy reasons to favor settlement between the
`
`parties to a proceeding. Office Patent Trial Practice Guide, 77 Fed. Reg.
`
`48,756, 48,768 (Aug. 14, 2012). When, as here, we have not rendered a
`
`Final Written Decision on the merits, we generally expect that the
`
`proceeding will terminate after the filing of a settlement agreement. See id.
`
`
`3 See IPR2017-00544, Paper 43, Paper 44; IPR2017-00778, Paper 44,
`Paper 45; IPR2017-00779, Paper 43, Paper 44; and IPR2017-00780,
`Paper 43, Paper 44.
`
`
`
`
`3
`
`
`
`Case IPR2017-00544 (Patent 7,534,263 B2)
`Case IPR2017-00778 (Patent 8,062,302 B2)
`Case IPR2017-00779 (Patent 8,062,302 B2)
`Case IPR2017-00780 (Patent 8,062,302 B2)
`
`Furthermore, although each of these proceeding is at an advanced stage, we
`
`note that, as the parties assert, the Joint Motions were filed several months
`
`prior to the extended statutory deadlines for rendering Final Written
`
`Decisions.
`
`Based on the preceding, we determine that it is appropriate to
`
`terminate each of these inter partes reviews as to both Smith & Nephew and
`
`Conformis without rendering a Final Written Decision. See 35 U.S.C.
`
`§ 317(a); 37 C.F.R. § 42.72.
`
`
`
`Accordingly, it is
`
`ORDERED that, in each of these proceedings, the parties’ Joint
`
`Request to have the settlement agreement (Ex. 2037) treated as confidential
`
`business information, kept separate from the file of the involved patents, and
`
`made available only to Federal Government agencies on written request, or
`
`to any person on a showing of good cause, under the provisions of
`
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is granted;
`
`FURTHER ORDERED that, in each of these proceedings, the Joint
`
`Motion to Terminate the proceeding is granted; and
`
`FURTHER ORDERED that each of these inter partes reviews is
`
`hereby terminated.
`
`
`
`
`4
`
`
`
`Case IPR2017-00544 (Patent 7,534,263 B2)
`Case IPR2017-00778 (Patent 8,062,302 B2)
`Case IPR2017-00779 (Patent 8,062,302 B2)
`Case IPR2017-00780 (Patent 8,062,302 B2)
`
`
`
`PETITIONER:
`Christy G. Lea
`Joseph R. Re
`Colin B. Heideman
`KNOBBE, MARTENS, OLSON,
` & BEAR, LLP
`2cgl@knobbe.com
`2jrr@knobbe.com
`2cbh@knobbe.com
`
`
`PATENT OWNER:
`Sanya Sukduang
`Timothy P. McAnulty
`Daniel F. Klodowski
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`Sanya.sukduang@finnegan.com
`Timothy.mcanulty@finnegan.com
`Daniel.klodowski@finnegan.com
`
`
`
`
`
`
`
`5
`
`
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