`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`
`EPL LIMITED,
`Petitioner
`
`v.
`
`COLGATE-PALMOLIVE COMPANY,
`Patent Owner
`
`___________________
`
`Case PGR2022-00001
`U.S. Patent No. 10,889,093 B2
`___________________
`
`
`PETITIONER’S UNOPPOSED MOTION TO DISMISS PETITION
`FOR POST-GRANT REVIEW
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`Case PGR2022-00001
`U.S. Patent No. 10,889,093 B2
`TABLE OF CONTENTS
`REASONS WHY TERMINATION IS APPROPRIATE ...........................1
`STATUS OF PROCEEDINGS INVOLVING THE CHALLENGED
`PATENT ............................................................................................2
`III. CONCLUSION ...................................................................................2
`
`
`
`I.
`II.
`
`
`
`- i -
`
`
`
`1005
`
`Case PGR2022-00001
`U.S. Patent No. 10,889,093 B2
`PETITIONER’S UPDATED EXHIBIT LIST
`
`Exhibit
`Description
`No.
`1001 U.S. Patent No. 10,899,093 B2 to Wang (“the ’093 Patent”)
`1002 Prosecution File History of U.S. Patent No. 10,889,093 B2 (“’093 File
`History”)
`1003 Declaration of Stephen McCarthy, Ph.D.
`1004 Curriculum Vitae of Stephen McCarthy, Ph.D.
`Barry A. Morris, The Science and Technology of Flexible Packaging:
`Multilayer Films from Resin and Process to End Use, Elsevier Inc.,
`2007 (“Morris”)
`1006 U.S. Patent No. 8,709,611 B2 to Haley (“Haley”)
`International Patent Application Publication No. WO 2014/005214 A1
`1007
`to Borse (“Borse”)
`1008 Guo, et al., “Predicting multilayer film’s residual stress from its
`monolayers,” Materials and Design 110 (2016) 858-864
`1009 Multilayer Flexible Packaging, 2nd Ed., edited by John R. Wagner, Jr.,
`Elsevier Inc., 2016 (“Wagner”)
`1010 Declaration of Sylvia Hall-Ellis, Ph.D.
`1011 High Density Polyethylene TIPELIN, MOL Group Product Catalogue,
`April 2018
`“SoarnoL,” Soarus L.L.C. website, captured by the Web Archive on
`January 6, 2019 (accessed October 8, 2021 at
`https://web.archive.org/web/20190106165900/https://soarus.com/prod
`uct/soarnol-evoh/)
`1013 Polyethylene Technical Guide Series, “01 General Properties –
`Technical Guide,” Qenos Pty Ltd.
`“HDPE Bottle Application Test, HDPE-A-01,” The Association of
`1014
`Postconsumer Plastic Recyclers
`1015 U.S. Patent No. 3,655,503 to Stanley et al. (“Stanley”)
`“Newest APR Recycling Demand Champion Companies Announced
`at the 2019 Plastics Recycling Conference,” The Association of Plastic
`Recyclers Press Release, March 13, 2019
`1017 U.S. Patent No. 7,802,685 B2 to Allen et al. (“Allen”)
`“The APR Design Guide for Plastics Recyclability,” The Association
`1018
`of Plastic Recyclers, October 26, 2018
`
`1012
`
`1016
`
`
`
`- ii -
`
`
`
`Case PGR2022-00001
`U.S. Patent No. 10,889,093 B2
`Description
`“Applications Guidance for Innovations ‘HDPE Bottles Applications
`Guidance Document,’” Association of Postconsumer Plastic
`Recyclers, May 13, 2019
`“SMARTFLEX -- The New Series of Packaging Film Extrusion
`Lines,” Bandera, YouTube video, June 10, 2012 (accessed October 11,
`2021 at https://www.youtube.com/watch?v=WdHTLiC5jUk)
`1021 Settlement Agreement (CONFIDENTIAL)
`
`1019
`
`1020
`
`Exhibit
`No.
`
`
`
`
`
`
`- iii -
`
`
`
`Case PGR2022-00001
`U.S. Patent No. 10,889,093 B2
`Petitioner EPL Limited (“Petitioner”) hereby moves for an order dismissing
`
`the Petition for Post-Grant Review (PGR) filed on October 12, 2021, directed to
`
`U.S. Patent No. 10,889,093 (“the ’093 patent”) and assigned case number
`
`PGR2022-00001. Petitioner has conferred with Patent Owner, who does not
`
`oppose this motion.
`
`Patent Owner has not filed a preliminary response. The Board has yet to
`
`issue a decision to institute trial.
`
`I.
`
`REASONS WHY TERMINATION IS APPROPRIATE
`
`On January 27, 2022, the Board provided email authorization to Petitioner to
`
`file this Motion to Dismiss the Petition. Dismissal is proper because this PGR
`
`proceeding is still in its early stages, and the Board has not yet “decided the merits
`
`of the proceeding.” Samsung Electronics Co., Ltd. et al v. Neodron Ltd., IPR2020-
`
`01682, Paper 14, 3 (P.T.A.B. Feb. 18, 2021); see also Samsung Electronics Co.,
`
`Ltd. v. Fundamental Innovation Systems Int’l, IPR2018-00605, Paper 10, 2
`
`(P.T.A.B. July 16, 2018) (noting that 35 U.S.C. § 317 “does not govern settlement
`
`prior to institution,” but explaining that “it is appropriate to dismiss the
`
`proceedings pursuant to 37 C.F.R. § 42.71(a)”). Accordingly, dismissal is
`
`appropriate here.
`
`Petitioner is filing herewith as Exhibit 1021 a true copy of the confidential
`
`settlement agreement entered between the parties. See 37 C.F.R. § 42.74(c). The
`
`
`
`- 1 -
`
`
`
`Case PGR2022-00001
`U.S. Patent No. 10,889,093 B2
`confidential settlement agreement was entered into in contemplation of the
`
`dismissal of the Petition. There are no collateral agreements or understandings
`
`made in connection with, or in contemplation of, the dismissal of the Petition. See
`
`37 C.F.R. § 42.74(b). A request is being filed herewith to treat this agreement as
`
`“business confidential information” and to keep it separate from the files of the
`
`involved patent. See 37 C.F.R. § 42.74(c).
`
`II.
`
`STATUS OF PROCEEDINGS INVOLVING THE CHALLENGED
`PATENT
`The instant PGR sought to be dismissed is the only pending proceeding
`
`currently involving the ’093 patent. The parties do not contemplate any litigation
`
`or proceeding between the parties concerning the ’093 patent in the foreseeable
`
`future.
`
`III. CONCLUSION
`
`The parties have settled all disputes relating to the challenged patent. This
`
`post-grant review is in an early stage, and the Board has not entered an institution
`
`decision in this proceeding. Accordingly, Petitioner respectfully requests that the
`
`Board dismiss the Petition and terminate this proceeding in its entirety.
`
`
`
`
`
`
`
`- 2 -
`
`
`
`Case PGR2022-00001
`U.S. Patent No. 10,889,093 B2
`
`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEIN & FOX, P.L.L.C.
`
` /
`
` Nirav N. Desai /
`
`
`Nirav N. Desai
`Registration No. 69,105
`Attorney for Petitioner
`
`
`
`
`
`
`
`
`
`
`
`
`Date: January 28, 2022
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005–3934
`(202) 371–2600
`
`
`
`- 3 -
`
`
`
`Case PGR2022-00001
`U.S. Patent No. 10,889,093 B2
`CERTIFICATION OF SERVICE
`
`The undersigned hereby certifies that true and correct copies of the
`
`foregoing PETITIONER’S UNOPPOSED MOTION TO DISMISS
`
`PETITION FOR POST-GRANT REVIEW and EXHIBIT 1021 (Confidential)
`
`were electronically served via e-mail in their entireties on January 28, 2022, upon
`
`the following counsel of record for Patent Owner:
`
`Scott A. McKeown (Lead Counsel)
`Nicole L. Pobre (Back-up Counsel)
`Keyna Chow (Back-up Counsel)
`ROPES & GRAY LLP
`Scott.McKeown@ropesgray.com
`Nicole.Pobre@ropesgray.com
`Keyna.Chow@ropesgray.com
`
`
`Respectfully submitted,
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
` /
`
` Nirav N. Desai /
`
`
`Nirav N. Desai
`Registration No. 69,105
`Attorney for Petitioner
`
`Date: January 28, 2022
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005–3934
`(202) 371–2600
`
`
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