`Trials@uspto.gov
`571-272-7822
`
`
`
`Paper No. 32
`Mailed: February 7, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`SCHUL INTERNATIONAL COMPANY, LLC,
`Petitioner,
`
`v.
`
`EMSEAL JOINT SYSTEMS, LTD.,
`Patent Owner.
`____________
`
`Case PGR2017-00053 (Patent 9,528,262 B2)
`Case PGR2018-00034 (Patent 9,644,368 B1)
`
`____________
`
`
`
`Before GEORGE R. HOSKINS, JAMES A. WORTH, and
`SCOTT C. MOORE, Administrative Patent Judges.
`
`HOSKINS, Administrative Patent Judge.
`
`
`
`DECISION
`Joint Motion to Terminate
`35 U.S.C. § 327 and 37 C.F.R. §§ 42.72 & 42.74
`
`
`
`
`
`
`
`
`PGR2017-00053 (Patent 9,528,262 B2)
`PGR2018-00034 (Patent 9,644,368 B1)
`
`
`In an email dated December 4, 2018, we authorized the parties to file
`a joint motion to terminate in each of these two proceedings, with a true
`copy of their agreement(s) in contemplation of termination and a request to
`treat the filed copy of their agreement(s) as business confidential
`information.
`On December 11, 2018, the parties filed joint motions (’053 Paper 26,
`’034 Paper 17) to terminate these two instant proceedings on the basis of a
`settlement reached by the parties. See 35 U.S.C. § 327(a); 37 C.F.R.
`§ 42.72. The parties also filed a copy of their written Settlement Agreement
`(’053 Exhibit 2048, ’034 Exhibit 2038), and requested that the Settlement
`Agreement be treated as business confidential information under 35 U.S.C.
`§ 327(b) and 37 C.F.R. § 42.74(c). ’053 Paper 27, ’034 Paper 18. The
`Settlement Agreement contemplated that the parties may enter an Ancillary
`Agreement, which remained under negotiation when the joint motions to
`terminate were filed. See ’053 Paper 29, 2. Accordingly, we informed the
`parties that, as the record then stood, we would have to deny the joint
`motions to terminate, because the Ancillary Agreement had not yet been
`executed and placed in the record. Id. at 2–3.
`On February 6, 2019, the parties filed a copy of the written Ancillary
`Agreement (’053 Exhibit 2049, ’034 Exhibit 2039), and requested that the
`Ancillary Agreement be treated as business confidential information under
`35 U.S.C. § 327(b) and 37 C.F.R. § 42.74(c). ’053 Paper 31, ’034 Paper 20.
`The parties indicate they have entered a settlement agreement,
`pursuant to which they agreed to seek termination of these two proceedings,
`and to dismiss district court litigation involving the ’262 patent and the
`’368 patent: Emseal Joint Systems, Ltd. v. Schul International Co., LLC and
`
`2
`
`
`
`PGR2017-00053 (Patent 9,528,262 B2)
`PGR2018-00034 (Patent 9,644,368 B1)
`
`Steven R. Robinson, Case No. 1:14-cv-00358-SM (D. N.H.). See
`’053 Paper 26, ’034 Paper 17; ’053 Pet. 6–7.
`Generally, the Board expects that a proceeding will terminate after the
`filing of a settlement agreement. See 35 U.S.C. § 327(a) (“A post-grant
`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. . . . 327(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 terminate after
`the filing of a settlement agreement, unless the Board has already decided
`the merits of the proceeding.”). Here, the two proceedings are at a mid-point
`stage, and a final decision has not been reached or entered. Further, it
`appears that the record now contains each agreement between the parties,
`including collateral agreements, made in connection with or in
`contemplation of the termination of these two proceedings. See 35 U.S.C.
`§ 327(a). Accordingly, we are persuaded that, under these circumstances,
`termination of these two proceedings is appropriate.
`Additionally, as was requested timely by the parties, the
`Settlement Agreement (’053 Exhibit 2048, ’034 Exhibit 2038) and the
`Ancillary Agreement (’053 Exhibit 2049, ’034 Exhibit 2039) will be treated
`as business confidential information under 35 U.S.C. § 327(b) and 37 C.F.R.
`§ 42.74(c).
`
`3
`
`
`
`PGR2017-00053 (Patent 9,528,262 B2)
`PGR2018-00034 (Patent 9,644,368 B1)
`
`
`This Decision does not constitute a final written decision pursuant to
`35 U.S.C. § 328(a).
`In consideration of the foregoing, it is hereby:
`ORDERED that the Settlement Agreement (’053 Exhibit 2048,
`’034 Exhibit 2038) and the Ancillary Agreement (’053 Exhibit 2049,
`’034 Exhibit 2039) be treated as business confidential information, kept
`separate from the respective files of U.S. Patent Nos. 9,528,262 B2 and
`9,644,368 B1, and be made available only to Federal Government agencies
`on written request, or to any person on a showing of good cause, under
`35 U.S.C. § 327(b) and 37 C.F.R. § 42.74(c); and
`FURTHER ORDERED that the joint motions to terminate these two
`proceedings are granted, and the proceedings are hereby terminated.
`
`4
`
`
`
`PGR2017-00053 (Patent 9,528,262 B2)
`PGR2018-00034 (Patent 9,644,368 B1)
`
`For PETITIONER:
`
`Gary E. Lambert
`David J. Connaughton, Jr.
`LAMBERT & ASSOCIATES
`info@lambertpatentlaw.com
`lawclerk@lambertpatentlaw.com
`
`James E. Hudson III
`CRAIN, CATON & JAMES
`jhudson@craincaton.com
`
`For PATENT OWNER:
`
`Michael K. Kinney
`Christine W. Beninati
`MKG, LLC
`kinney@mkgip.com
`beninati@mkgip.com
`
`
`5
`
`
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