`571-272-7822
`
`Paper 42
`Entered: October 30, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NEXEON LTD.,
`Petitioner,
`
`v.
`
`ONED MATERIAL, LLC
`Patent Owner.
`____________
`
`Case IPR2017-00851
`Patent 8,440,369 B2
`____________
`
`
`
`Before JO-ANNE M. KOKOSKI, JON B. TORNQUIST, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`
`DECISION
`Termination of the Proceeding
`35 U.S.C. § 317(a) and 37 C.F.R. § 42.72
`
`
`
`IPR2017-00851
`Patent 8,440,369 B2
`
`
`On October 25, 2018, with Board authorization, the parties filed a
`joint motion to terminate this proceeding (Paper 40), along with what they
`indicate is a copy of their written settlement agreement (Ex. 1090). On the
`same day, the parties also filed a joint motion requesting that the settlement
`agreement be treated as confidential information and kept separate from the
`file of U.S. Patent No. 8,440,369 B2. Paper 41.
`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.” We
`instituted a trial in this proceeding on August 25, 2017, 1 but we have not yet
`decided the merits of the proceeding.
`Further, under 37 C.F.R. § 42.74(b), “[a]ny agreement or
`understanding between the parties made in connection with, or in
`contemplation of, the termination of a proceeding shall be in writing and a
`true copy shall be filed with the Board before the termination of the trial.”
`The parties have filed what they indicate is a copy of their written settlement
`agreement, which they represent constitutes the entire agreement between
`the parties with respect to this inter partes review. Paper 40, 2. In view of
`the foregoing, we determine that it is appropriate to terminate this
`proceeding without rendering a final written decision. See 37 C.F.R.
`§§ 42.72, 42.74.
`
`
`1 On June 6, 2018, the one-year period for issuing a Final Written Decision
`in this proceeding was extended by up to six months. Paper 34; Paper 35;
`see 37 C.F.R. § 42.100(c).
`
`
`
`2
`
`
`
`IPR2017-00851
`Patent 8,440,369 B2
`
`
` As requested by the parties, the settlement agreement will be treated
`as business confidential information and kept separate from the patent file.
`37 C.F.R. § 42.74(c).
`
`Accordingly, it is
`ORDERED that the joint motion to terminate the proceeding (Paper
`
`40) is granted;
`FURTHER ORDERED that the parties’ joint request that the
`settlement agreement (Ex. 1090) be treated as business confidential
`information (Paper 41) is granted; and
`FURTHER ORDERED that this proceeding is hereby terminated.
`
`
`
`
`
`3
`
`
`
`IPR2017-00851
`Patent 8,440,369 B2
`
`PETITIONER:
`S. Richard Carden
`James V. Suggs
`McDONNELL BOEHNEN
`HULBERT & BERGHOFF LLP
`carden@mbhb.com
`suggs@mbhb.com
`
`
`
`PATENT OWNER:
`
`Jennifer Hayes
`NIXON PEABODY LLP
`jenhayes@nixonpeabody.com
`
`
`
`
`
`
`
`
`
`4
`
`
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