`571-272-7822
`
`Paper 16
`Entered: November 29, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MIPOX CORPORATION,
`Petitioner,
`
`v.
`
`INTERNATIONAL TEST SOLUTIONS, INC.,
`Patent Owner.
`____________
`
`IPR2017-00869 (Patent 8,801,869 B2)
`IPR2017-00937 (Patent 7,202,683 B2)
`IPR2017-00938 (Patent 6,777,966 B1)1
`____________
`
`
`
`Before JO-ANNE M. KOKOSKI, JEFFREY W. ABRAHAM, and
`JOHN F. HORVATH, 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
`
`
`1 This Decision addresses the same issues in all three cases. Therefore, we
`exercise our discretion to issue one Decision to be entered in all three
`proceedings.
`
`
`
`
`
`IPR2017-00869 (Patent 8,801,869 B2)
`IPR2017-00937 (Patent 7,202,683 B2)
`IPR2017-00938 (Patent 6,777,966 B1)
`
`
`On November 22, 2017, with Board authorization, the parties filed a
`joint motion to terminate, along with what they indicate is a true copy of
`their written settlement agreement, in each of IPR2017-00869 (Papers 12,
`13), IPR2017-00937 (Papers 13, 15), and IPR2017-00938 (Papers 12, 14).
`The parties also filed a joint request in each proceeding that the settlement
`agreement be treated as business confidential information and kept separate
`from the patent files. IPR2017-00869, Paper 14; IPR2017-00937, Paper 14;
`IPR2017-00938, Paper 13.
`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 each proceeding, but Patent Owner has not yet filed its
`Patent Owner Responses, and we have not yet decided the merits of the
`proceedings.
`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 true copy of their written
`settlement agreement, which they represent constitutes the entire agreement
`between the parties with respect to these inter partes reviews. IPR2017-
`00869, Paper 12, 2; IPR2017-00937, Paper 13, 2; IPR2017-00938, Paper 12,
`2. In view of the foregoing, we determine that it is appropriate to terminate
`these proceedings without rendering final written decisions.
`
`
`
`
`2
`
`
`
`IPR2017-00869 (Patent 8,801,869 B2)
`IPR2017-00937 (Patent 7,202,683 B2)
`IPR2017-00938 (Patent 6,777,966 B1)
`
`
` As requested by the parties, the settlement agreement will be treated
`as business confidential information and kept separate from the patent files.
`37 C.F.R. § 42.74(c).
`
`Accordingly, it is
`ORDERED that the joint motions to terminate the proceedings in
`
`IPR2017-00869 (Papers 12), IPR2017-00937 (Paper 13), and IPR2017-
`00938 (Paper 12) are granted;
`FURTHER ORDERED that the parties’ joint requests (IPR2017-
`00869, Paper 14; IPR2017-00937, Paper 14; IPR2017-00938, Paper 13)) that
`the settlement agreement (IPR2017-00869 (Paper 13), IPR2017-00937
`(Paper 15), and IPR2017-00938 (Paper 14)) be treated as business
`confidential information are granted; and
`FURTHER ORDERED that the proceedings in IPR2017-00869,
`IPR2017-00937, and IPR2017-00938 are hereby terminated.
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2017-00869 (Patent 8,801,869 B2)
`IPR2017-00937 (Patent 7,202,683 B2)
`IPR2017-00938 (Patent 6,777,966 B1)
`
`PETITIONER:
`
`Thomas J. Donovan
`Mark A. Hagedorn
`BARNES & THORNBURG LLP
`thomas.donovan@btlaw.com
`mark.hagedorn@btlaw.com
`
`
`PATENT OWNER:
`
`Timothy W. Lohse
`Blake W. Jackson
`DLA PIPER LLP (US)
`timothy.lohse@dlapiper.com
`blake.jackson@dlapiper.com
`
`Pejman J. Sharifi
`WINSTON & STRAWN LLP
`psharifi@winston.com
`
`
`
`
`
`
`
`4
`
`
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