`Tel: 571-272-7822
`
`Paper 7
`Entered: May 25, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`WATERS TECHNOLOGIES CORPORATION,
`Petitioner,
`v.
`BIOMEDICAL DEVICE CONSULTANTS & LABORATORIES OF
`COLORADO, LLC,
`Patent Owner.
`
`Case IPR2018-00498
`Patent 9,186,224 B2
`
`
`
`
`
`
`
`
`
`Before TREVOR M. JEFFERSON, MIRIAM L. QUINN, and
`JASON M. REPKO, Administrative Patent Judges.
`REPKO, Administrative Patent Judge.
`
`
`
`DECISION
`Dismissing Petition
`37 C.F.R. § 42.71
`Granting Request to Treat Settlement Documents as Confidential Business
`Information
`37 C.F.R. § 42.74(c)
`
`
`
`
`
`
`
`Case IPR2018-00498
`Patent 9,186,224 B2
`Petitioner, Waters Technologies Corporation, and Patent Owner,
`Biomedical Device Consultants & Laboratories of Colorado, LLC., jointly
`request to terminate1 this inter partes review challenging U.S. Patent No.
`9,186,224 B2 (“the ’224 Patent”). Paper 6 (“Motion”), 1–2. Along with the
`joint motion, the parties filed a settlement agreement covering the ’224
`patent. Ex. 1019 (“Settlement Agreement”). The parties also have filed a
`joint request to have the Settlement Agreement treated as confidential
`business information under 37 C.F.R. § 42.74(c). Motion 2–3.
`The Board generally expects that a case “will terminate after the filing
`of a settlement agreement, unless the Board has already decided the merits.”
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14,
`2012). In this case, no decision on institution has been made. The parties
`submit that termination is appropriate because they have settled their
`dispute. Motion 1–2. Under the circumstances, we determine that it is
`appropriate to dismiss the petition. See 37 C.F.R. § 42.71(a).
`After reviewing the Settlement Agreement between Petitioner and
`Patent Owner, we find that the Settlement Agreement contains confidential
`business information regarding the terms of settlement. We determine that it
`is appropriate to treat the Settlement Agreement between Petitioner and
`
`
`1 Although titled “JOINT MOTION TO TERMINATE PROCEEDING
`UNDER 35 USC §317(A),” (Paper 6), section 317(a) provides, in relevant
`part, “[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 the patent owner, unless the Office has decided the merits of
`the proceeding before the request for termination is filed.” 35 U.S.C.
`§ 317(a) (emphasis added). Because we have not yet issued a decision
`whether to institute this inter partes review, we treat the request as seeking
`dismissal of the petition.
`
`2
`
`
`
`Case IPR2018-00498
`Patent 9,186,224 B2
`Patent Owner as business confidential information under 37 C.F.R.
`§ 42.74(c).
`
`
`ORDER
`
`Accordingly, it is:
`ORDERED that the Motion is granted;
`FURTHER ORDERED that the petition in this proceeding is
`dismissed; and
`FURTHER ORDERED that the request that the Settlement
`Agreement be treated as business confidential information and be kept
`separate from the files of an involved patent or application under 37 C.F.R.
`§ 42.74(c) is granted.
`
`
`3
`
`
`
`Case IPR2018-00498
`Patent 9,186,224 B2
`PETITIONER:
`Deborah M. Vernon, Ph.D.
`Danielle Herritt
`Mary Bourke
`WOMBLE BOND DICKINSON (US) LLP
`deborah.vernon@wbd-us.com
`danielle.herritt@wbd-us.com
`mary.bourke@wbd-us.com
`
`PATENT OWNER:
`Brad J. Hattenbach
`Adam Floyd
`Clinton Conner
`DORSEY & WHITNEY, LLP
`hattenbach.brad@dorsey.com
`floyd.adam@dorsey.com
`conner.clint@dorsey.com
`
`4
`
`
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