`
`Trials@uspto.gov
`Entered: October 9, 2018
`
`571.272.7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`R.J. REYNOLDS VAPOR COMPANY,
`Petitioner,
`
`v.
`
`FONTEM HOLDINGS 1 B.V.,
`Patent Owner.
`____________
`
`IPR2017-01120 (Patent 8,899,239)
`IPR2018-00627 (Patent 8,393,331)
`IPR2018-00631 (Patent 9,339,062)
`IPR2018-00633 (Patent 9,326,551)
`IPR2018-00634 (Patent 9,456,632)1
`____________
`
`
`Before JOSIAH C. COCKS, GRACE KARAFFA OBERMANN,
`DONNA M. PRAISS, BRIAN J. McNAMARA,
`JEREMY M. PLENZLER, JO-ANNE M. KOKOSKI, and
`KRISTINA M. KALAN, Administrative Patent Judges.2
`
`Per Curiam.
`
`
`ORDER
`Resolving Joint Motions to Terminate Pursuant to Settlement and
`Granting Joint Requests to Treat Settlement Agreement as Confidential
`35 U.S.C. § 317; 37 C.F.R. §§ 42.72, 42.74
`
`
`1 This Order addresses issues common to all five proceedings.
`Accordingly, we exercise our discretion to issue a single order to be entered
`in each proceeding.
`2 This nomenclature does not denote an expanded panel, but identifies
`panel members assigned to one or more proceeding identified in the caption.
`
`
`
`
`IPR2017-01120 (Patent 8,899,239)
`IPR2018-00627 (Patent 8,393,331)
`IPR2018-00631 (Patent 9,339,062)
`IPR2018-00633 (Patent 9,326,551)
`IPR2018-00634 (Patent 9,456,632)
`
`
`On October 4, 2018, pursuant to Board authorization, the parties filed
`joint motions for termination in each of the above-identified proceedings.
`Papers 56, 15, 10, 9, 10.3 Along with each motion, the parties filed a copy
`of a document they describe as their settlement agreement as well as a joint
`request to treat that agreement as business confidential information to be
`kept separate from the files of the involved patents. Papers 57, 16, 11, 10,
`11; see 37 C.F.R. § 42.74(c) (a party to a settlement may request that the
`settlement agreement be treated as business confidential and be kept separate
`from the patent file).
`The parties represent “that they reached a settlement agreement
`resolving all disputes between them involving the patent-at-issue in” each of
`the five proceedings. Paper 56, 1; Paper 15, 1; Paper 10, 1; Paper 9, 1;
`Paper 10, 1. The parties further aver that “[t]here are no other agreements,
`oral or written, between Patent Owner and Petitioner” “made in connection
`with, or in contemplation of, the termination of” any of the proceedings. Id.
`The parties submit under seal “a true copy (including counterparts) of the
`settlement agreement.” Ex. 2065; Ex. 2014; Ex. 2081; Ex. 2081; Ex. 2087.
`The settlement agreement appears to represent a comprehensive agreement
`between adversaries that have been embroiled in several years of district
`court litigation and administrative disputes. Id. ¶¶ 1.27, 1.35, Ex. A
`(Licensed Patents).
`
`
`3 We sequentially refer to papers and exhibits filed in IPR2017-01120,
`IPR2018-00627, IPR2018-00631, IPR2018-00633, and IPR2018-00634.
`2
`
`
`
`IPR2017-01120 (Patent 8,899,239)
`IPR2018-00627 (Patent 8,393,331)
`IPR2018-00631 (Patent 9,339,062)
`IPR2018-00633 (Patent 9,326,551)
`IPR2018-00634 (Patent 9,456,632)
`
`
`The five proceedings at issue here are in various stages of the
`administrative process: A final written decision is due in IPR2017-01120 on
`October 23, 2018; a Patent Owner Response is due in IPR2018-00627 on
`October 22, 2018; decisions on institution are due in IPR2018-00633 and
`IPR2018-00634 on October 18, 2018; and a decision on institution is due in
`IPR2018-00631 on October 12, 2018. The parties identify persuasive
`reasons why termination is appropriate in each proceeding. Paper 56, 1–5;
`Paper 15, 1–5; Paper 10, 1–5; Paper 9, 1–5; Paper 10, 1–5. Further, the
`parties’ resolution of the dispute surrounding the five patents at issue in
`these proceedings is part of a comprehensive agreement that resolves an
`expansive array of rights pertaining to significantly more than the involved
`U.S. Patents, including “all claims filed by [Patent Owner] against
`[Petitioner] in the United States District Court for the Middle District of
`North Carolina Case Nos. 1:16-cv-01255, 1:16-cv-01257, 1:16-cv-01258,
`and 1:17-cv-00175,” which have been “dismissed with prejudice” pursuant
`to a joint stipulation of the parties. Order entered Oct. 1, 2018;4 see
`Ex. 2065; Ex. 2014; Ex. 2081; Ex. 2081; Ex. 2087 (Exhibit A, Licensed
`Patents) (confidential settlement agreement).
`Under the particular facts and circumstances presented, we find that
`granting the joint motions in all five proceedings, according to the parties’
`wishes, is warranted, notwithstanding that a final written decision is due
`
`
`4 A copy of the district court’s order is entered in IPR2017-00627 as
`Exhibit 3001 and as Exhibit 3002 in each of the other four proceedings
`identified in the caption.
`
`3
`
`
`
`IPR2017-01120 (Patent 8,899,239)
`IPR2018-00627 (Patent 8,393,331)
`IPR2018-00631 (Patent 9,339,062)
`IPR2018-00633 (Patent 9,326,551)
`IPR2018-00634 (Patent 9,456,632)
`
`shortly in IPR2017-01120. Granting the joint motions in these interrelated
`proceedings promotes the “strong public policy” that favors “settlement
`between the parties to a proceeding.” Office Patent Trial Practice Guide, 77
`Fed. Reg. 48,756, 48,768 (Aug. 14, 2012) (“The Board expects that a
`proceeding will terminate after the filing of a settlement agreement, unless
`the Board has already decided the merits of the proceeding.”). Termination
`is proper because the parties jointly filed the requests for termination before
`a final decision on the merits was entered in any of the five proceedings.
`35 U.S.C. § 317(a). Based on our review of the settlement agreement,
`moreover, we find that the document contains confidential business
`information regarding the terms of settlement, and that good cause exists to
`treat the document as business confidential information pursuant to
`35 U.S.C. § 317(b).
`Accordingly, we grant the parties’ joint motion to terminate the trial
`proceedings in IPR2017-01120 and IPR2018-00627. However, because the
`requests for trial termination were filed before decisions on trial institution
`were entered in IPR2018-00631, IPR2018-00633, and IPR2018-00634, we
`dismiss the Petitions in those preliminary proceedings. We also grant the
`parties’ joint motion to file the settlement agreement as business confidential
`information in each proceeding, to be kept separate from the files of the
`involved patents.
`This paper does not constitute a final written decision pursuant to
`35 U.S.C. § 318(a).
`
`
`4
`
`
`
`IPR2017-01120 (Patent 8,899,239)
`IPR2018-00627 (Patent 8,393,331)
`IPR2018-00631 (Patent 9,339,062)
`IPR2018-00633 (Patent 9,326,551)
`IPR2018-00634 (Patent 9,456,632)
`
`
`ORDER
`
`It is
`ORDERED that the parties’ joint motions to terminate trial in
`IPR2017-01120 and IPR2018-00627 are granted;
`FURTHER ORDERED that the Petitions are dismissed in
`IPR2018-00631, IPR2018-00633, and IPR2018-00634; and
`FURTHER ORDERED that the parties’ joint request that the
`settlement agreement be treated as business confidential information, to
`be kept separate from the patent file, is granted in each proceeding.
`
`
`
`
`
`
`
`5
`
`
`
`IPR2017-01120 (Patent 8,899,239)
`IPR2018-00627 (Patent 8,393,331)
`IPR2018-00631 (Patent 9,339,062)
`IPR2018-00633 (Patent 9,326,551)
`IPR2018-00634 (Patent 9,456,632)
`
`PETITIONER:
`Ralph Gabric
`Robert Mallin
`Joshua Smith
`Yuezhong Feng
`Scott Timmerman
`Kyle Yarberry
`rgabric@brinksgilson.com
`rmallin@brinksgilson.com
`jsmith@brinksgilson.com
`yfeng@brinksgilson.com
`stimmerman@brinksgilson.com
`kyarberry@brinksgilson.com
`
`
`PATENT OWNER:
`Michael Wise
`Joseph Hamilton
`Lara Dueppen
`Tyler Bowen
`Nathan R. Kassebaum
`mwise@perkinscoie.com
`jhamilton@perkinsoie.com
`ldueppen@perkinscoie.com
`tbowen@perkinscoie.com
`nkassebaum@perkinscoie.com
`
`
`6
`
`