PGR2021-00005
`Joint Motion to Dismiss
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`
`TRUTEK CORP.
`Petitioner
`
`v.
`
`MATRIXX INITIATIVES, INC.
`Patent Owner
`________________________________
`
`Case No. PGR2021-00005
`Patent 10,736,931
`
`
`JOINT MOTION TO DISMISS PETITION FOR POST GRANT REVIEW
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Joint Motion to Dismiss
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`
`TRUTEK CORP.
`Petitioner
`
`v.
`
`MATRIXX INITIATIVES, INC.
`Patent Owner
`________________________________
`
`Case No. PGR2021-00005
`Patent 10,736,931
`
`
`JOINT MOTION TO DISMISS PETITION FOR POST GRANT REVIEW
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`INTRODUCTION
`Pursuant to 35 U.S.C. § 327 and 37 C.F.R. § 42.74 and the Board’s
`
`PGR2021-00005
`Joint Motion to Dismiss
`
`
`I.
`
`authorization by email dated November 30, 2020, Petitioner Trutek Corp. (“Trutek”)
`
`and Patent Owner Matrixx Initiatives, Inc. (“Matrixx”) jointly move to dismiss the
`
`present post grant review proceeding in light of the parties’ settlement of their
`
`dispute insofar as it relates to U.S. Patent No. 10,736,931 (“the ’931 patent”). The
`
`parties are concurrently filing true copies of their Settlement Agreement in
`
`connection with this matter as required by statute. The Settlement Agreement
`
`completely resolves all pending controversies between the Patent Owner and the
`
`Petitioner concerning the ’931 patent.
`
` The parties further jointly certify that there are no other agreements or
`
`understandings, oral or written, between them, including any collateral agreements,
`
`made in connection with, or in contemplation of, the dismissal of the present
`
`proceeding as set forth in 35 U.S.C. § 327(b).
`
`The parties request that the Settlement Agreement be treated as business
`
`confidential information and kept separate from the file of the ’931 patent. A joint
`
`request for treatment of the Settlement Agreement as business confidential
`
`information and kept separate from the file of the ’931 patent pursuant to 35 U.S.C.
`
`§ 327(b) and 37 C.F.R. § 42.74(c) is being filed concurrently herewith.
`
`
`
`2
`
`
`
`II. DISMISSAL IS WARRANTED
`1. Explanation for Dismissal. Dismissal is appropriate because the merits
`
`PGR2021-00005
`Joint Motion to Dismiss
`
`
`have not yet been decided and the parties have settled their entire dispute concerning
`
`the ’931 patent. As provided by statute, a post grant proceeding “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.” 35 U.S.C. § 327(a). Finally, this proceeding has not been
`
`instituted, does not impact any other currently-pending litigation proceedings as
`
`explained below, and there are “strong public policy reasons to favor settlement.”
`
`See Patent Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012).
`
`2. Related Litigation for the ‘931 patent. Trutek contends that the litigation
`
`entitled Trutek Corp. v. Matrixx Initiatives, Inc., et al., Case No. 3:19-cv-17647-
`
`BRM-ZNQ (D.N.J. Sept. 5, 2019) (“New Jersey Litigation”) is related. The
`
`Application of the ’931 Patent is a continuation of the Application of U.S. Patent
`
`No. 9,555,069 (“the ’069 Patent”), which in turn is a continuation of the Application
`
`of U.S. Patent No. 9,034,401 (“the ’401 Patent”). Trutek stated in its Mandatory
`
`Notice that “[t]he complaint alleges that the claimed subject matter of the ’069 and
`
`’401 Patents were derived from Petitioner’s trade secrets in violation of three
`
`confidential disclosure agreements between Petitioner and Patent Owner.” (Petition
`
`
`
`3
`
`
`
`PGR2021-00005
`Joint Motion to Dismiss
`
`at 3.) A joint motion to dismiss the New Jersey Litigation in its entirety is being
`
`filed in light of the settlement between Matrixx and Trutek.
`
`3. Related Proceedings Before the Patent Office. There are no related
`
`proceedings before the Patent Office concerning the ’931 patent. One petition filed
`
`by Matrixx to institute an inter partes proceeding concerning a different patent
`
`owned by Trutek is pending, namely IPR2020-01592 involving U.S. Patent No.
`
`8,163,802. Two petitions filed by Trutek to institute inter partes proceedings
`
`concerning two different patents owned by Matrixx are pending, namely IPR2020-
`
`01554 involving the ’069 Patent and IPR2020-01511 involving the ’401 Patent. No
`
`institution decision has been issued in any of the above proceedings and a motion to
`
`dismiss each of these proceedings is being filed in light of the settlement between
`
`Matrixx and Trutek.
`
`III. CONCLUSION
`Matrixx and Trutek respectfully submit that dismissal of this proceeding is
`
`warranted and respectfully request entry of such relief.
`
`
`
`
`
`
`
`4
`
`
`
`Date: November 30, 2020
`
`
` /Stanley H. Kremen/
`Stanley H. Kremen (Reg. No. 51900)
`PATENTS GROUP LLC
`4 Lenape Lane
`East Brunswick, NJ 08816
`Telephone: (732) 593-7294
`Facsimile: (732) 312-5218
`uspto@patentsgroup.com
`
`Amirali Y. Haidri (Reg. No. 29164)
`Law Offices of Amirali Y. Haidri
`110 Hillside Avenue, Suite #104
`Springfield, NJ 07081
`Telephone: (908) 688-8700
`Facsimile: (908) 688-8445
`amiraliyhaidri@aol.com
`
`Attorneys for Petitioner Trutek Corp.
`
`
`
`
`
`
`
`PGR2021-00005
`Joint Motion to Dismiss
`
`
`
`
`Respectfully submitted,
`
` /Reza Dokhanchy/
`Reza Dokhanchy (Reg. No. 62,795)
`Adam R. Alper, (to seek pro hac vice
`admission)
`Barbara Barath, (to seek pro hac vice
`admission)
`KIRKLAND & ELLIS LLP
`555 California St.
`San Francisco, CA 94104
`Telephone: 415-439-1400
`Fax: 415-439-1500
`reza.dokhanchy@kirkland.com
`adam.alper@kirkland.com
`barbara.barath@kirkland.com
`
`Michael W. De Vries, (to seek pro hac
`vice admission)
`KIRKLAND & ELLIS LLP
`555 South Flower Street
`Los Angeles, CA 90071
`Telephone: 213-680-8400
`Facsimile: 213-680-8500
`michael.devries@kirkland.com
`
`Patricia A. Carson, (to seek pro hac
`vice admission)
`patricia.carson@kirkland.com
`KIRKLAND & ELLIS LLP
`601 Lexington Avenue
`New York, New York 10022
`Telephone: (212) 446-4800
`Facsimile: (212) 446-4900
`
`Attorneys for Patent Owner Matrixx
`Initiatives, Inc.
`
`
`
`5
`
`
`
`PGR2021-00005
`Joint Motion to Dismiss
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing document was
`
`served on November 30, 2020 via electronic mail, upon agreement under 37 CFR §
`
`42.105, to the attorney of record for the patent owner at the following address:
`
`Stanley H. Kremen (Reg. No. 51900)
`PATENTS GROUP LLC
`4 Lenape Lane
`East Brunswick, NJ 08816
`Telephone: (732) 593-7294
`Facsimile: (732) 312-5218
`uspto@patentsgroup.com
`
`Amirali Y. Haidri (Reg. No. 29164)
`Law Offices of Amirali Y. Haidri
`110 Hillside Avenue, Suite #104
`Springfield, NJ 07081
`Telephone: (908) 688-8700
`Facsimile: (908) 688-8445
`amiraliyhaidri@aol.com
`
`
`/Reza Dokhanchy/
`Reza Dokhanchy (Reg. No. 62,795)
`
`
`
`6
`
`
`
`
`
`
`
`
`
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
