`571.272.7822
`
`
`
` Paper No. 15
`
` Entered: December 18, 2018
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`ZURN INDUSTRIES, LLC,
`Petitioner,
`
`v.
`
`SIOUX CHIEF MFG. CO., INC.,
`Patent Owner.
`____________________
`
`Case IPR2018-00975
`Patent 8,347,906 B1
`____________________
`
`
`
`
`
`
`
`
`Before RAE LYNN P. GUEST, TINA E. HULSE, and
`AVELYN M. ROSS, Administrative Patent Judges.
`
`ROSS, Administrative Patent Judge.
`
`
`
`
`ORDER
`Dismissing the Proceedings
`37 C.F.R. §§ 42.5(a), 42.72(a)
`
`
`
`
`
`
`IPR2018-00975
`Patent 8,347,906 B1
`
`
`On December 17, 2018, Petitioner Zurn Industries, LLC (“Petitioner”)
`and Patent Owner Sioux Chief Manufacturing Company, Inc. (“Patent
`Owner”) (collectively, “the Parties”) filed a Joint Motion to Terminate the
`Inter Partes Review. Paper 13, (“Joint Motion to Terminate”). Together
`with the Joint Motion to Terminate, the Parties filed a copy of their written
`Settlement Agreement and Covenant Not To Sue (Ex. 2030, “Agreement”)
`and a Joint Request to File the Settlement Agreement as Business
`Confidential Information Pursuant to 35 U.S.C. § 317(b). Paper 14, (“Joint
`Request”).
`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); see also 35 U.S.C. §317(a) and 37 C.F.R. § 42.72. Here, the case
`remains at a preliminary stage—one where the Patent Owner has yet to file
`its Patent Owner Response. The Petitioner and Patent Owner indicate that
`the Settlement Agreement fully resolves all litigation and proceedings
`between the Parties to this inter partes review proceeding relating to the
`’906 Patent.1 Joint Motion to Terminate 2; Ex. 2030, 2. The Parties also
`indicate that “this IPR is [now] the only existing litigation or proceeding
`between the parties involving the ’906 patent and that no litigation or
`proceeding between the parties involving the ’906 patent is contemplated in
`the foreseeable future.” Id. at 3.
`
`
`1 The copending district court litigation, styled Sioux Chief Manufacturing
`Co., Inc. v. Zurn Industries, LLC et al., Case No. 1:18-cv-163-RGA, was
`dismissed on December 12, 2018. Joint Motion to Terminate 2.
`2
`
`
`
`
`
`IPR2018-00975
`Patent 8,347,906 B1
`
`
`Under these circumstances, we determine that it is appropriate to
`terminate this proceeding. See 37 C.F.R. §§42.5(a) and 42.72. We also
`determine that it is appropriate to treat the Agreement (Ex. 1035) as business
`confidential information to be kept separate from the patent file. See 35
`U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`
`
`ORDER
`In view of the foregoing, it is
`ORDERED that the Parties Joint Motion to Terminate the Inter Partes
`Review (Paper 13) is granted and this proceeding is hereby terminated; and
`FURTHER ORDERED that the Joint Request to File the Settlement
`Agreement as Business Confidential Information (Paper 14) is granted.
`
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2018-00975
`Patent 8,347,906 B1
`
`PETITIONER:
`
`
`Johanna M. Wilbert
`Louis A. Klapp
`Michael T. Piery
`QUARLES & BRADY LLP
`johanna.wilbert@quarles.com
`louis.klapp@quarles.com
`michael.piery@quarles.com
`
`
`PATENT OWNER:
`
`Ryan D. Dykal
`Mark D. Schafer
`SHOOK, HARDY & BACON L.L.P.
`rdykal@shb.com
`mschafer@shb.com
`
`
`
`4
`
`
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