Attractive Surgical, LLCDownload PDFPatent Trials and Appeals BoardOct 22, 2020IPR2019-01294 (P.T.A.B. Oct. 22, 2020) Copy Citation Trials@uspto.gov Paper 29 Tel: 571-272-7822 Entered: October 22, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ LEVITA MAGNETICS INTERNATIONAL CORP., Petitioner, v. ATTRACTIVE SURGICAL, LLC, Patent Owner. ____________ IPR2019-01294 (9,386,973 B2) IPR2019-01295 (8,602,981 B2) ____________ Before GRACE KARAFFA OBERMANN, SHERIDAN K. SNEDDEN, and AVELYN M. ROSS, Administrative Patent Judges. ROSS, Administrative Patent Judge. TERMINATION Due to Settlement After Institution of Trial Granting Request to Treat Settlement Agreement as Business Confidential Information 35 U.S.C. § 317; 37 C.F.R. §§ 42.72, 42.74(c) IPR2019-01294 (9,386,973 B2) IPR2019-01295 (8,602,981 B2) 2 On October 20, 2020, with our prior authorization, Levita Magnetics International Corp. (“Petitioner”) and Attractive Surgical, LLC (“Patent Owner”) (collectively, “the Parties”) filed a Joint Motion to Terminate the inter partes review in both in IPR2019-001294 and IPR2019-001295. Paper 27 (“Motion”).1 Together with the Motion, the parties filed a copy of their written Settlement, Release, and Assignment Agreement (Ex. 1027, “Settlement Agreement”), and a Joint Request to File Settlement Agreement as Business Confidential Information Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 28 (“Joint Request”). The Board generally expects that a case “will terminate after the filing of a settlement agreement, unless the Board has already decided the merits.” Consolidated Trial Practice Guide, 86 (Nov. 2019) (“Consolidated TPG”)2; see 35 U.S.C. §317(a) and 37 C.F.R. § 42.72. Petitioner filed two petitions for inter partes review, i.e., IPR2019-001294 and IPR2019-001295, challenging U.S. Patent Nos. 9,386,973 and 8,602,981 respectively (collectively “the challenged patents”). On January 21, 2020, we instituted inter partes review of both cases. The oral hearing is scheduled for November 17, 2020. The Parties explain that “[t]ermination of this proceeding is proper because briefing is not yet complete and oral argument has not taken place, thus the Board has not yet ‘decided the merits of the proceeding before the 1 Citations in this Order are to papers filed in IPR2019-001294. Similar papers were filed IPR2019-001295. See, e.g., IPR2019-001295, Paper 26 (Motion to Terminate), Paper 27 (Joint Request to File Settlement Agreement as Business Confidential Information), Ex. 1027 (Settlement Agreement). 2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. IPR2019-01294 (9,386,973 B2) IPR2019-01295 (8,602,981 B2) 3 request for termination is filed.’” Motion 1 (citing 35 U.S.C. § 317(a); Consolidated TPG at 86). The parties indicate that the agreement reached resolves all disputes regarding the challenged patents, including the inter partes review in IPR2019-001294 and IPR2019-001295 as well as the related district court litigations in both Ohio and California, which have been dismissed with prejudice. Id. at 2; Ex. 1027, 4. Under these circumstances, we determine that it is appropriate to enter judgment and terminate this proceeding without rendering a final written decision. See 35 U.S.C. § 317(a); 37 C.F.R. §§ 42.5(a), 42.72. After reviewing the Agreement, we further find that it contains confidential business information regarding the terms of the settlement and that good cause exists to treat the Agreement as business confidential information to be kept separate from the patent file. See 35 U.S.C. § 317(b); 37 C.F.R. § 42.74(c). This Paper does not constitute a Final Written Decision under 35 U.S.C. § 318(a). ORDER In view of the foregoing, it is ORDERED that the Joint Request to File Settlement as Business Confidential Information (Paper 28) is granted; and FURTHER ORDERED that the Settlement Agreement (Ex. 1027) shall be treated as business confidential information and shall be kept separate from the patent file; and FURTHER ORDERED that the parties’ Joint Motion to Terminate the inter partes review (Paper 27) is granted and this proceeding is hereby terminated. IPR2019-01294 (9,386,973 B2) IPR2019-01295 (8,602,981 B2) 4 For PETITIONER: Michael T. Rosato (Reg. No. 52,182) Matthew A. Argenti (Reg. No. 61,836) Tasha M. Thomas (Reg. No. 73,207) WILSON SONSINI GOODRICH & ROSATI mrosato@wsgr.com margenti@wsgr.com tthomas@wsgr.com For PATENT OWNER: David A. Giordano (Reg. No. 64,480) David A Chavous (Reg. No. 66,047) davidg@giordanolawllc.com dchavous@chavousiplaw.com Copy with citationCopy as parenthetical citation