`571-272-7822
`
`
`
`Paper 13
`Date: November 29, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KATHREIN USA, INC.,
`Petitioner,
`
`v.
`
`FRACTUS S.A.,
`Patent Owner.
`____________
`
`
`
`
`
`Case IPR2019-00955
`Patent 8,497,814 B2
`____________
`
`
`
`Before JAMESON LEE, KARL D. EASTHOM, and
`JOHN R. KENNY, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`
`
`
`DECISION
`Settlement Prior to Institution of Trial and
`Granting in Part Request to Keep Settlement Agreement Separate
`37 C.F.R. §§ 42.71(a), 42.74(c)
`
`
`
`
`
`
`
`
`
`
`IPR2019-00955
`Patent 8,497,814 B2
`
`
`DISCUSSION
`On October 19, 2019, with Board authorization, the parties filed a
`joint motion to terminate the proceeding (Paper 11, “Termination Motion”),
`and a settlement agreement (Ex. 2001, “Settlement Agreement”). The
`Termination Motion requests the Board to keep the Settlement Agreement
`separate from the file of this proceeding and the patent challenged in this
`inter partes review (Patent No. 8,497,814 B2, “challenged patent”). Paper
`11, 6.1
`The parties represent that they have agreed to settle, that Exhibit
`2001 represents their settlement agreement, and that “there are no collateral
`agreements or understandings made in connection with, or in contemplation
`of, the termination of the inter partes review.” Paper 11, 4. Generally, the
`Board expects that a proceeding will terminate after the filing of a
`settlement agreement. See 35 U.S.C. § 317(a) (“An 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.”); 37 C.F.R. § 42.72 (“The Board may
`terminate a trial without rendering a final written decision, where
`appropriate, including . . . pursuant to a joint request under 35 U.S.C. 317(a)
`. . . .”); see also Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`48,768 (Aug. 14, 2012) (“The Board expects that a proceeding will
`
`
`1 In a separate paper, the parties also jointly request the Board to keep the
`Settlement Agreement separate ––i.e., this latter request tracks the request
`in the Termination Motion. Paper 12.
`
`
`
`
`2
`
`
`
`IPR2019-00955
`Patent 8,497,814 B2
`
`terminate after the filing of a settlement agreement, unless the Board has
`already decided the merits of the proceeding.”).
`This proceeding progressed only to an early stage. We have not
`issued a decision on whether to institute an inter partes review. Under
`these circumstances, we grant the Termination Motion.
`We also grant the request to keep the Settlement Agreement separate
`from the challenged patent as business confidential information. See 35
`U.S.C. § 317(b) (“At the request of a party to the proceeding, the agreement
`or understanding shall be treated as business confidential information, shall
`be kept separate from the file of the involved patents, and shall be made
`available only to Federal Government agencies on written request, or to any
`person on a showing of good cause.”); see also 37 C.F.R. § 42.74(c).2
`
`ORDER
`
`It is
`ORDERED that the Termination Motion (Paper 11), to the extent it
`requests termination of this proceeding, is granted;
`FURTHER ORDERED that the Settlement Agreement (Ex. 2001)
`shall be treated as business confidential information, shall be kept separate
`from the file of the challenged patent, and shall be made available only in
`
`
`2 The parties request, but cite no basis, to “keep [the Settlement Agreement]
`separate from the file of these proceedings.” Paper 11, 6 (emphasis added);
`accord Paper 12, 2 (similar request). As noted, the parties already filed the
`Settlement Agreement as Exhibit 2001 in this proceeding. Accordingly, we
`deny the request to keep the Settlement Agreement separate from the file of
`the instant proceeding.
`
`
`
`
`3
`
`
`
`IPR2019-00955
`Patent 8,497,814 B2
`
`accordance with the provisions of 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(c);
`FURTHER ORDERED that the request to keep the Settlement
`Agreement separate from the file of this proceeding is denied; and
`FURTHER ORDERED that this proceeding is terminated.
`
`FOR PETITIONER:
`Scott A Burow
`Matthew P. Becker
`Binal J. Patel
`John Harris Curry
`Jordan Bodner
`Shambhavi Patel
`BANNER AND WITCOFF, LTD.
`sburow@bannerwitcoff.com
`mbecker@bannerwitcoff.com
`bpatel@bannerwitcoff.com
`jcurry@bannerwitcoff.com
`jbodner@bannerwitcoff.com
`spatel@bannerwitcoff.com
`
`
`FOR PATENT OWNER:
`Jason Shapiro
`Patrick Finnan
`Mark J. DeBoy
`EDELL, SHAPIRO, AND FINNAN LLC
`js@usiplaw.com
`pjf@usiplaw.com
`mjd@usiplaw.com
`
`
`
`
`4
`
`
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
