`571-272-7822
`
`
`
`
`
`
`Paper 16
`Entered: February 18, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LEE SPECIALTIES, INC.,
`Petitioner,
`
`v.
`
`FHE USA LLC,
`Patent Owner.
`
`____________
`
`IPR2019-01366
`Patent 10,030,461 B2
`____________
`
`
`
`
`Before JAMES A. TARTAL, MICHAEL L. WOODS, and
`SEAN P. O’HANLON, Administrative Patent Judges.
`
`O’HANLON, Administrative Patent Judge.
`
`
`
`
`TERMINATION
`Due to Settlement After Institution of Trial
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`
`
`
`
`
`IPR2019-01366
`Patent 10,030,461 B2
`
`
`I. DISCUSSION
`Petitioner, Lee Specialties, Inc., and Patent Owner, FHE USA LLC,
`
`jointly request to terminate IPR2019-01366 challenging U.S. Patent
`No. 10,030,461 B2 (“the ’461 patent”). Paper 15 (“Motion”). Along with
`the Motion, the parties filed what they represent is a true copy of their
`written settlement agreement. Motion 2; Ex. 1038.
`
`Under 35 U.S.C. § 317(a), “[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 patent owner, unless the Office has decided the
`merits of the proceeding before the request for termination is filed.” The
`Board generally expects that a case “will terminate after the filing of a
`settlement agreement, unless the Board has already decided the merits of the
`proceeding.” Patent Trial and Appeal Board Consolidated Trial Practice
`Guide 86 (Nov. 2019).1 In this case, the Board has instituted review but has
`not yet issued a final written decision. The parties represent that they “have
`settled their dispute with respect to the ’461 Patent” and that “[t]here are no
`collateral agreements or understandings made in connection with, or in
`contemplation of, the termination of this proceeding.” Motion 2. Under
`these circumstances, we are persuaded that it is appropriate to terminate this
`proceeding. See 37 C.F.R. § 42.74 (2019).
`
`
`1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`2
`
`
`
`IPR2019-01366
`Patent 10,030,461 B2
`
`
`II. ORDER
`
`Accordingly, it is:
`
`ORDERED that the joint motion to terminate the proceeding is
`
`granted; and
`
`FURTHER ORDERED that this proceeding is terminated.
`
`3
`
`
`
`IPR2019-01366
`Patent 10,030,461 B2
`
`For PETITIONER:
`Gregory P. Webb
`Dustin Johnson
`Russ Emerson
`HAYNES AND BOONE, LLP
`greg.webb.ipr@haynesboone.com
`dustin.johnson.ipr@haynesboone.com
`russ.emerson@haynesboone.com
`
`Don Tiller
`D. TILLER LAW PLLC
`don.tiller@dtillerlawpllc.com
`For PATENT OWNER:
`Douglas R. Nemec
`Rachel R. Blitzer
`Christopher B. McKinley
`SKADDEN, ARPS, SLATE, MEAGHER & FLOM LLP
`douglas.nemec@skadden.com
`rachel.blitzer@skadden.com
`
`4
`
`
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