`571.272.7822
`
`
`Paper 25
`Entered: September 24, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`RESMED LIMITED, RESMED INC., AND
`RESMED CORP.,
`Petitioner,
`
`v.
`
`FISHER & PAYKEL HEALTHCARE LIMITED,
`Patent Owner.
`____________
`
`Case IPR2019-00172
`Case IPR2019-00173
`Patent 9,974,914 B2
`____________
`
`
`
`Before THOMAS L. GIANNETTI, MICHAEL L. WOODS, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`WIEKER, Administrative Patent Judge.
`
`
`
`
`TERMINATION
`Due to Settlement After Institution of Trial
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`
`
`
`
`
`
`IPR2019-00172
`IPR2019-00173
`Patent 9,974,914 B2
`
`
`On September 9, 2019, upon request from Petitioner and Patent
`
`Owner (collectively, “the Parties”), we authorized the Parties to file joint
`
`motions to terminate these proceedings pursuant to a settlement agreement
`
`under 37 C.F.R. § 42.74. On September 12, 2019, the Parties filed Joint
`
`Motions to Terminate each of these proceedings pursuant to a settlement
`
`agreement. Paper 22 (“Joint Motion”).1 The Parties also filed true copies of
`
`their written settlement agreement (Ex. 2005), made in connection with the
`
`termination of these proceedings, in accordance with 35 U.S.C. § 317(b) and
`
`37 C.F.R. § 42.72. Additionally, the Parties submitted joint requests to have
`
`their written settlement agreement treated as confidential business
`
`information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 23.
`
`The Parties submit that termination is appropriate because the Parties
`
`have settled their dispute and have reached agreement to terminate these
`
`proceedings. Paper 22, 1. The Parties represent that their settlement
`
`agreement ends all disputes as to the challenged patent, and that “[t]here are
`
`no collateral agreements or understandings made in connection with, or in
`
`contemplation of, the termination of this IPR.” Id.
`
`The Board is not a party to the settlement, and may identify
`
`independently any question of patentability. 37 C.F.R. § 42.74(a).
`
`Generally, however, 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).
`
`
`
`
`1 Unless otherwise indicated, the referenced paper numbers and exhibit
`numbers are identical for both IPR2019-00172 and IPR2019-00173.
`
`
`
`2
`
`
`
`IPR2019-00172
`IPR2019-00173
`Patent 9,974,914 B2
`
`
`On May 30, 2019, the Board instituted trial in these proceedings.
`
`Paper 19. At this stage of the proceedings, the Board does not have before it
`
`full briefing on the trial issues and the Board has not reached a final decision
`
`in either proceeding. Under these circumstances and based on the record
`
`before us, we determine that it is appropriate to terminate these proceedings
`
`with respect to the Parties, to promote efficiency and to minimize
`
`unnecessary costs. Based on these facts, it is appropriate to enter judgement
`
`terminating these proceedings without rendering a final written decision and
`
`to treat the Confidential Settlement and License Agreement (Ex. 2005) as
`
`business confidential information. See 35 U.S.C. §§ 317(a), 317(b);
`
`37 C.F.R. §§ 42.72, 42.74(c).
`
`This Order does not constitute a final written decision pursuant to
`
`35 U.S.C. § 318(a).
`
`
`
`In consideration of the foregoing, it is
`
`ORDER
`
`ORDERED that the Parties’ joint requests (Paper 23) that the
`
`settlement agreement (Exhibit 2005) be treated as business confidential
`
`information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) and be kept
`
`separate from the patent file in these proceedings are granted;
`
` FURTHER ORDERED that the Joint Motions to Terminate
`
`(Paper 22) IPR2019-00172 and IPR2019-00173 are granted; and
`
`FURTHER ORDERED that both of these proceedings are terminated.
`
`
`
`
`
`
`
`3
`
`
`
`IPR2019-00172
`IPR2019-00173
`Patent 9,974,914 B2
`
`PETITIONER:
`
`Edward Sikorski
`ed.sikorski@dlapiper.com
`
`Tiffany Miller
`tiffany.miller@dlapiper.com
`
`James Heintz
`jim.heintz@dlapiper.com
`
`
`PATENT OWNER:
`
`Doug Muehlhauser
`2dgm@knobbe.com
`
`Benjamin Everton
`2bje@knobbe.com
`
`
`
`
`
`
`4
`
`
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