`Trials@uspto.gov
`571-272-7822
`
`
`
`Paper No. 29
`Entered: December 20, 2018
`
`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
`
`____________
`
`
`
`Before GEORGE R. HOSKINS, JAMES A. WORTH, and
`SCOTT C. MOORE, Administrative Patent Judges.
`
`HOSKINS, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`PGR2017-00053
`Patent 9,528,262 B2
`
`
`On December 11, 2018, the parties filed a Joint Motion to Terminate
`this proceeding (Paper 26), on the basis that the parties have agreed to a
`confidential settlement agreement, which has been filed in the proceeding as
`confidential (“Parties and Board Only”) Exhibit 2048. See Papers 26 & 27.
`On December 13, 2018, via an e-mail communication, the parties
`jointly requested a telephone conference with the Board to discuss
`re-scheduling of oral arguments in this proceeding, currently scheduled for
`January 10, 2019. The e-mail indicated the confidential settlement
`agreement (Ex. 2048, Section 2.4) contemplates that the parties may enter an
`Ancillary Agreement, which at the present time remains under negotiation.
`The Board accordingly held a telephone conference on December 18,
`2018. Mr. David Connaughton spoke on behalf of Petitioner. Mr. Michael
`Kinney spoke on behalf of Patent Owner, and Ms. Christine Beninati also
`participated on behalf of Patent Owner. Based on counsels’ representations
`during the telephone conference, we conclude that it is very unlikely for the
`Ancillary Agreement to be executed before January 10, 2019. However, we
`also conclude that there remains the very real prospect of the Ancillary
`Agreement being executed in or before early February 2019.
`Based on that foregoing information, as the record currently stands,
`we would have to deny the Joint Motion to Terminate, because the Ancillary
`Agreement has not yet been executed and placed in the record. “Any
`agreement or understanding between the patent owner and a petitioner,
`including any collateral agreements referred to in such agreement or
`understanding, made in connection with, or in contemplation of, the
`termination of a post-grant review under this section shall be in writing, and
`a true copy of such agreement or understanding shall be filed in the Office
`
`2
`
`
`
`PGR2017-00053
`Patent 9,528,262 B2
`
`before the termination of the post-grant review as between the parties.”
`35 U.S.C. § 327(b); 37 C.F.R. § 42.74(b).
`Nonetheless, it appears that holding oral arguments on January 10,
`2019, would be an inefficient use of the Board’s and the parties’ resources.
`Therefore, we have decided to grant the parties’ joint request to cancel the
`oral arguments currently scheduled for January 10, 2019, and to re-schedule
`oral arguments for a later date. Counsel for both parties indicated they are
`available on the afternoon of February 13, 2019. Accordingly, in a separate
`order entered contemporaneously with this order, we have scheduled oral
`arguments to occur then.
`However, that date begins to impinge upon the Board’s ability to
`render a Final Written Decision on or before the statutory due date (April 9,
`2019), in the event a settlement is not consummated by execution of the
`Ancillary Agreement. See 35 U.S.C. § 326(a)(11); 37 C.F.R. § 42.200(c).
`We therefore informed counsel during the telephone conference that oral
`arguments will not be reset to a date later than February 13, 2019.
`We also informed counsel that, if a settlement is not consummated
`before the hearing is held, there is a very real possibility that the Joint
`Motion to Terminate will be denied. 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,” and even “[i]f no petitioner remains in the post-
`grant review, the Office may terminate the post-grant review or proceed to a
`final written decision under section 328(a)”) (emphases added); 37 C.F.R.
`§ 42.74(a).
`
`3
`
`
`
`PGR2017-00053
`Patent 9,528,262 B2
`
`
`In consideration of the foregoing, we informed counsel that the
`Ancillary Agreement must be executed and placed in the record of the
`present proceeding on or before February 6, 2019, in order to assure that the
`Joint Motion to Terminate will be granted, and the oral arguments will be
`avoided. The parties may upload any relevant papers as Board and Parties
`only pending decision on whether to keep the papers separate. We also
`scheduled a telephonic status conference for January 29, 2019.
`It is, therefore, ORDERED that a telephonic status conference for this
`proceeding will be held at 3:00 p.m. Eastern Time on January 29, 2019
`(Telephone Number (877) 972-8080, Passcode 7614880).
`
`
`For PETITIONER:
`
`Gary Lambert
`David Connaughton
`LAMBERT & ASSOCIATES
`info@lambertpatentlaw.com
`lawclerk@lambertpatentlaw.com
`
`James Hudson III
`CRAIN, CATON & JAMES
`jhudson@craincaton.com
`
`For PATENT OWNER:
`
`Michael Kinney
`MKG, LLC
`kinney@mkgip.com
`
`
`4
`
`
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