`IPR2017-01640
`
`U.S. Patent No. 8,240,299
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`———————————————
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`———————————————
`Ravin Crossbows, LLC
`Petitioner,
`v.
`Precision Shooting Equipment, Inc.
`Patent Owner
`———————————————
`Inter Partes Review No.: IPR2017-01640
`Patent No. 8,240,299
`———————————————
`JOINT MOTION OF PETITIONER AND PATENT OWNER TO
`TERMINATE PROCEEDING PURSUANT TO 35 U.S.C. §317 AND 37
`C.F.R. §42.74
`
`
`
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`Honorable Justices:
`
`
`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74, and the Board’s
`
`authorization dated October 13, 2017 and November 7, 2017, Petitioner Ravin
`
`Crossbows, LLC and Venatics, Inc. (“Petitioner”) and Patent Owner Precision
`
`Shooting Equipment (“Patent Owner”) (collectively, the “Parties”) jointly request
`
`termination of Inter Partes Review No. IPR2017-01640 pursuant to settlement. As
`
`there are no other petitioners in this proceeding and the proceeding is still at an
`
`
`
`1
`
`
`
`
`IPR2017-01640
`
`U.S. Patent No. 8,240,299
`
`early stage, the Parties respectfully submit that termination of this proceeding is
`
`appropriate.
`
`I.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`Pursuant to 35 U.S.C. § 317(a), the Parties jointly request termination of
`
`inter partes review Case No. IPR2017-01640 pursuant to a settlement.
`
`II.
`
`STATEMENT OF FACTS
`
`On June 19, 2017, Petitioner filed a petition seeking inter partes review of
`
`the ‘299 patent in Case No. IPR2017-01640. On September 19, 2017, Patent
`
`Owner filed a preliminary response. The Board has not entered a decision
`
`regarding institution.
`
`A joint motion to terminate generally must “(1) include a brief explanation
`
`as to why termination is appropriate; (2) identify all parties in any related
`
`litigation involving the patents at issue; (3) identify any related proceedings
`
`currently before the Office, and (4) discuss specifically the status of each such
`
`related litigation or proceeding with respect to each party to the litigation or
`
`proceeding.” Heartland Tanning, Inc. v. Sunless, Inc., IPR2014-00018, Paper 26
`
`at 2 (PTAB Jul. 28, 2014). Those factors are addressed below.
`
`(1) Brief Explanation: Termination of this review is appropriate because
`
`the Parties have settled their dispute related to this petition for inter partes review.
`
`(2) & (4) Related Litigation: On December 12, 2016, Patent Owner filed
`
`
`
`2
`
`
`
`
`IPR2017-01640
`
`U.S. Patent No. 8,240,299
`
`suit against Petitioner for infringement of U.S. Patent No. 8,240,299 (“the ‘299
`
`patent”) and related U.S. Patent No. 8,453,631 (the “631 patent”). That suit is
`
`captioned Precision Shooting Equipment, Inc. v. Ravin Crossbows, LLC, Civil
`
`Action No. 16-cv-820-slc (W.D. Wis.). Termination of this review is appropriate
`
`because the Parties have settled their dispute and have agreed to dismissal of that
`
`lawsuit. A Stipulation For Dismissal was filed in the above-identified suit on
`
`October 16, 2017, requesting entry of an Order dismissing such suit, and all claims
`
`and counterclaims filed therein, with prejudice.
`
`(3) Related Proceedings Before the Patent Office: On June 9, 2017,
`
`Petitioner filed a petition seeking inter partes review of the ‘631 patent, which is
`
`related to the ‘299 patent at issue in this proceeding. On September 11, 2017,
`
`Patent Owner filed a preliminary response. The Board has not entered a decision
`
`regarding institution of review of the ‘631 patent. The Parties filed a joint motion
`
`to terminate the inter partes review proceeding for the ‘631 patent.
`
`III. ARGUMENT
`
`First, the parties are jointly requesting termination because they have
`
`reached a settlement as to all the disputes in this proceeding and as to the asserted
`
`claims of the ‘299 patent at issue in this proceeding. See 77 Fed. Reg. 48756,
`
`48768 (Aug. 14, 2012) (“There are strong public policy reasons to favor
`
`settlement between the parties to a proceeding”) (emphasis added). Both
`
`
`
`3
`
`
`
`
`IPR2017-01640
`
`U.S. Patent No. 8,240,299
`
`Congress and the federal courts have expressed a strong interest in encouraging
`
`settlement in litigation. See, e.g., Delta Air Lines, Inc. v. August, 450 U.S. 346, 352
`
`(1981) (“The purpose of [Fed. R. Civ. P.] 68 is to encourage the settlement of
`
`litigation.”); Bergh v. Dept. of Transp., 794 F.2d 1575, 1577 (Fed. Cir. 1986)
`
`(“The law favors settlement of cases.”), cert. denied, 479 U.S. 950 (1986). The
`
`Federal Circuit places a particularly strong emphasis on settlement. For example,
`
`it endorses the ability of parties to agree not to challenge validity as part of a
`
`settlement. See Flex-Foot, Inc. v. CRP, Inc., 238 F.3d 1362, 1370 (Fed. Cir. 2001);
`
`see also Cheyenne River Sioux Tribe v. U.S., 806 F.2d 1046, 1050 (Fed. Cir. 1986)
`
`(noting that the law favors settlement to reduce antagonism and hostility between
`
`parties). Here, no public interest or other factors weigh against termination.
`
`Second, Petitioner and Patent Owner have met the statutory requirement that
`
`they file a “joint request” to terminate before the Office “has decided the merits of
`
`the proceeding.” See 35 U.S.C. § 317(a). Under Section 317(a), an inter partes
`
`review shall be terminated upon such joint request “unless the Office has decided
`
`the merits of the proceeding before the request for termination is filed.” Id. The
`
`statute establishes no other preconditions. See id.
`
`Third, Petitioner and Patent Owner have reached a Settlement Agreement to
`
`end their disputes in this proceeding and the underlying litigation. Pursuant to 35
`
`U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), the agreement between the Parties is in
`
`
`
`4
`
`
`
`
`IPR2017-01640
`
`U.S. Patent No. 8,240,299
`
`writing, constitutes the entire understanding and agreement between the Parties,
`
`and a copy of the Settlement Agreement is submitted herewith as Exhibit R1019.
`
`There are no other agreements, oral or written, between the parties made in
`
`connection with, or in contemplation of, the termination of this review.
`
`In a separate motion filed concurrently herewith, the Parties jointly request
`
`that the Settlement Agreement filed as Exhibit R1019 be treated as “Business
`
`Confidential Information”, and be kept separate from the files of this proceeding in
`
`accordance with 35 U.S.C. § 371(b) and 37 C.F.R. § 42.74(c). No other such
`
`agreements, written or oral, exist between or among the parties. Petitioner further
`
`represents that it will no longer participate in this review even if the Board does not
`
`terminate this review.
`
`Fourth, termination of these proceedings will conserve the Board’s resources
`
`and obviate the need for any more Board involvement in this matter.
`
`IV. CONCLUSION
`
`For the foregoing reasons, the Petitioner and Patent Owner respectfully
`
`request termination of the inter partes review of the ‘299 patent in Case No.
`
`IPR2017-01640.
`
`
`
`
`
`
`
`
`
`
`5
`
`
`
`
`IPR2017-01640
`
`
`
`Dated:_November 8, 2017___
`
`_/Marvin A. Glazer/___________
`Marvin A. Glazer (Reg. No. 28,801)
`Lead Counsel for Patent Owner
`CAHILL GLAZER PLC
`2141 Highland Ave., Ste. 155
`Phoenix, AZ 85016
`Tel: (601) 956-7000
`
`Back-up Counsel:
`William C. Cahill (Reg. No. 19,742)
`CAHILL GLAZER PLC
`2141 E. Highland Ave., Ste. 155
`Phoenix, AZ 85016
`Tel: (602) 956-7000
`
`Attorneys for Patent Owner,
`Precision Shooting Equipment,
`Inc.
`
`
`
`
`
`
`U.S. Patent No. 8,240,299
`
` Respectfully submitted,
`
`
`
`_/Jonathan D. Carpenter/_______
`J. Derek Vandenburgh (Reg. No. 32,179)
`Jonathan D. Carpenter (Reg. No. 56,172)
`Iain A. McIntyre (Reg. No. 40,337)
`Carlson, Caspers, Vandenburgh,
`Lindquist & Schuman
`225 South Sixth Street
`Suite 4200
`Minneapolis, MN 55402
`Tel.: 612-436-9600
`Fax: 612-436-9605
`Email:
`dvandenburgh@carlsoncaspers.com
`Email: jcarpenter@carlsoncaspers.com
` Email: imcintyre@carlsoncaspers.com
`
`Attorneys for Petitioner,
`Ravin Crossbows, LLC
`
`
`
`6
`
`
`
`
`IPR2017-01640
`
`
`
`CERTIFICATE OF SERVICE
`
`U.S. Patent No. 8,240,299
`
`
`I certify that on November 8, 2017, I caused a copy of this JOINT
`MOTION OF PETITIONER AND PATENT OWNER TO TERMINATE
`PROCEEDING PURSUANT TO 35 U.S.C. §317 AND 37 C.F.R. §42.74 to be
`served by E-mail to the following counsel of record for U.S. Patent No. 8,240,299
`and Patent Owner’s litigation counsel, at their respective correspondence addresses
`as follows:
`
`Patent Counsel
`Marvin A. Glazer
`mglazer@cvglaw.com
`
`
`Litigation Counsel
`Eric H. Monson
`COYNE, SCHULTZ, BECKER and BAUER SC
`Emonson@cnsbb.com
`
`
`Respectfully submitted,
`
`
`Dated: November 8, 2017
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Jonathan D. Carpenter/
`Jonathan D. Carpenter
`Reg. No. 56,172
`
`
`
`
`
`
`
`7
`
`
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
