`571-272-7822
`
`Paper 16
`
`Entered: November 2, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`FRONTIER WATER SYSTEMS, LLC,
`Petitioner,
`
`v.
`
`GENERAL ELECTRIC CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2017-01468
`Patent 7,790,034 B2
`____________
`
`Before KRISTINA M. KALAN, JON B. TORNQUIST, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`
`DECISION
`Dismissing the Proceeding
`37 C.F.R. § 42.5(a), 37 C.F.R. § 42.71(a)
`
`
`
`
`
`
`IPR2017-01468
`Patent 7,790,034 B2
`
`The parties have requested that the above-captioned proceeding be
`
`terminated pursuant to a settlement. The Board authorized the parties to file
`a joint motion to terminate or dismiss the above-captioned proceeding on
`October 25, 2017.
`On October 27, 2017, and pursuant to 35 U.S.C. § 317, the parties
`filed a joint motion to terminate the above-captioned proceeding (Paper 14,
`“Joint Motion”) and a joint request to treat the settlement agreement 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) (Paper 15), along
`with a copy of the settlement agreement (Ex. 1023) and the litigation
`dismissal order (Ex. 1024).
`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). This case is 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 this case, 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 IPR2017-01468 be terminated.
`Paper 14. The parties “certify that EX1023 [(the settlement agreement)] is
`the complete agreement between the Parties, and no other collateral
`agreements or understandings have been made or are contemplated to be
`made relating to this IPR proceeding including its termination.” Id. at 3.
`The parties further represent that, pursuant to the settlement agreement, they
`have agreed to terminate not only the present proceeding but also the related
`
`
`
`2
`
`
`
`IPR2017-01468
`Patent 7,790,034 B2
`
`district court litigation in the United States District Court for the Central
`District of Utah, which has been dismissed. Id. at 2 (citing Ex. 1024).
`Based on the facts of this case, and in view of the parties’ Joint
`Motion in this proceeding, we determine that it is appropriate to dismiss the
`Petition in the above-captioned case 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 Motion and the joint
`request to treat the settlement agreement 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 the joint request to treat the settlement agreement as
`
`business confidential information, to be kept separate from the patent file, is
`granted;
`FURTHER ORDERED that the Joint Motion is granted; and
`FURTHER ORDERED that the Petition for Inter Partes Review of
`the above-referenced patent is dismissed.
`
`
`
`
`
`3
`
`
`
`IPR2017-01468
`Patent 7,790,034 B2
`
`FOR PETITIONER:
`
`Adam K. Yowell
`Paul J. Prendergast
`Michael D. Rounds
`BROWNSTEIN HYATT FARBER SCHRECK
`ayowell@bhfs.com
`pprendergast@bhfs.com
`mrounds@bhfs.com
`
`
`
`FOR PATENT OWNER:
`
`David Pollock
`Jonathan Detrixhe
`REED SMITH, LLP
`dpollock@reedsmith.com
`jdetrixhe@reedsmith.com
`
`
`
`
`4
`
`
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