`571-272-7822
`
`Paper 12
`
`Entered: August 21, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`OBALON THERAPEUTICS, INC.,
`Petitioner,
`
`v.
`
`POLYZEN, INC.,
`Patent Owner.
`____________
`
`Cases IPR2017-00812 (Patent 7,682,306 B2)1
`IPR2017-00813 (Patent 7,883,491 B2)
`IPR2017-01023 (Patent 6,712,832 B2)
`____________
`
`Before KRISTINA M. KALAN, JON B. TORNQUIST, and
`CHRISTOPHER M. KAISER, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`
`DECISION
`Dismissing the Proceedings
`37 C.F.R. § 42.5(a), 37 C.F.R. § 42.71(a)
`
`
`
`
`
`1 This Decision addresses the same issues in each of three related cases. We
`exercise our discretion to issue one Decision to be entered in each case. The
`parties are not authorized to use this style heading in their papers.
`
`
`
`IPR2017-00812 (Patent 7,682,306 B2)
`IPR2017-00813 (Patent 7,883,491 B2)
`IPR2017-01023 (Patent 6,712,832 B2)
`
`The parties have requested that the above-captioned proceedings be
`
`terminated pursuant to a settlement. The Board authorized the parties to file
`a joint motion to terminate or dismiss the above-captioned proceedings on
`August 18, 2017.
`On August 18, 2017, and pursuant to 35 U.S.C. § 317, the parties filed
`a joint motion to terminate in each of the above-captioned proceedings
`(IPR2017-00812, Paper 10; IPR2017-00813, Paper 10; IPR2017-01023,
`Paper 11) and a joint request to treat the settlement agreements 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) (IPR2017-00812, Paper 11;
`IPR2017-00813, Paper 11; IPR2017-01023, Paper 12), along with a copy of
`the settlement agreements (IPR2017-00812, Exs. 1013, 1014; IPR2017-
`00813, Exs. 1010, 1011; IPR2017-01023, Exs. 1018, 1019).
`Generally, 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). These cases are in the
`preliminary proceeding stage. A preliminary proceeding begins with the
`filing of a petition for instituting a trial and ends with a written decision as to
`whether trial will be instituted. See 37 C.F.R. § 42.2. In each of the above-
`captioned proceedings, Petitioner filed a Petition, and Patent Owner filed a
`Preliminary Response, but no decision whether to institute a trial has been
`made.
`The parties jointly request that IPR2017-00812, IPR2017-00813, and
`IPR2017-01023 be terminated. IPR2017-00812, Paper 10, 1; IPR2017-
`00813, Paper 10, 1; IPR2017-01023, Paper 11, 1. In each case, the parties
`
`
`
`2
`
`
`
`IPR2017-00812 (Patent 7,682,306 B2)
`IPR2017-00813 (Patent 7,883,491 B2)
`IPR2017-01023 (Patent 6,712,832 B2)
`
`“certify that there are no collateral agreements or understandings made in
`connection with, or in contemplation of, the termination of this inter partes
`review” and that the “Settlement and License Agreement and Inter Partes
`Review Proceedings Settlement Agreement reflect the final settlement and
`resolution of all disputes between Patent Owner and Petitioner regarding this
`inter partes review.” Id. at 2. The parties represent that, pursuant to the
`settlement agreements, they have agreed to terminate not only the present
`proceedings but also the related district court litigation in the United States
`District Court for the Southern District of California. Id. at 1.
`Based on the facts of these cases, and in view of the parties’ joint
`motions in these proceedings, we determine that it is appropriate to dismiss
`the Petitions in each of the above-captioned cases as to both Petitioner and
`Patent Owner without rendering either a decision to institute or a final
`written decision. See 37 C.F.R. §§ 42.5(a); 42.71(a). Therefore, the joint
`motions and the joint requests to treat the settlement agreements as business
`confidential information are granted. This paper does not constitute a final
`written decision pursuant to 35 U.S.C. § 318(a).
`Accordingly, it is
`ORDERED that, in each of the above-captioned proceedings, the joint
`
`request to treat the settlement agreements as business confidential
`information, to be kept separate from the patent file, is granted;
`FURTHER ORDERED that the joint motion filed in each of the
`above-captioned proceedings is granted; and
`FURTHER ORDERED that the Petitions for Inter Partes Review of
`each of the above-referenced patents are dismissed.
`
`
`
`3
`
`
`
`IPR2017-00812 (Patent 7,682,306 B2)
`IPR2017-00813 (Patent 7,883,491 B2)
`IPR2017-01023 (Patent 6,712,832 B2)
`
`
`
`FOR PETITIONER:
`
`Peng Chen
`Desmond O’Sullivan
`MORRISON & FOERSTER LLP
`pchen@mofo.com
`dosullivan@mofo.com
`
`
`
`FOR PATENT OWNER:
`
`Steven Hultquist
`Mary Grant
`HULTQUIST IP
`hultquist@hultquistip.com
`mgrant@hultquistip.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
