CB Distributors, Inc. and DR Distributors, LLCv.FONTEM HOLDINGS 1 B.V.Download PDFPatent Trial and Appeal BoardDec 7, 201513426817 (P.T.A.B. Dec. 7, 2015) Copy Citation Trials@uspto.gov 571-272-7822 Paper No. 41 Date Entered: December 7, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ CB DISTRIBUTORS, INC. and DR DISTRIBUTORS, LLC, Petitioner, v. FONTEM HOLDINGS 1 B.V., Patent Owner. ____________ Cases IPR2014-015291 Patent 8,689,805 B2 ____________ Before JOSIAH C. COCKS, RAMA G. ELLURU, and JO-ANNE M. KOKOSKI, Administrative Patent Judges. COCKS, Administrative Patent Judge. DECISION Joint Motion to Terminate the Inter Partes Review 35 U.S.C. § 317 and 37 C.F.R. § 42.72 1 Case IPR2015-01027 has been joined with this proceeding. IPR2014-01529 Patent 8,689,805 B2 I. Introduction On November 18, 2015, Petitioner entities CB Distributors, Inc. and DR Distributors, LLC (“CB/DR”), and Patent Owner Fontem Holdings 1 B.V. (“Fontem”) (collectively referred to as “the parties”), filed a Joint Motion to Terminate this inter partes review proceeding. Paper 37 (“Joint Motion to Terminate”).2 Along with the Joint Motion to Terminate, the parties filed a true copy of their written settlement agreement and license agreement (Ex. 2017), as well as a joint request to have their settlement agreement treated as business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (Paper 38). The parties contend that “[t]he settlement agreement and license agreement have resolved all disputes involving the patent-at-issue between the Patent Owner and Petitioner CB/DR.” Joint Motion to Terminate 4. II. Discussion The parties are reminded that the Board is not a party to the settlement, and may identify independently any question of patentability. 37 C.F.R. § 42.74(a). Generally, however, the Board expects that a proceeding will terminate after the filing of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” The 2 Filing of the Joint Motion to Terminate was authorized in e-mail correspondence from Board personnel on November 30, 2015. IPR2014-01529 Patent 8,689,805 B2 2 requirement for terminating review with respect to CB/DR is met. Furthermore, under 35 U.S.C. § 317(a), “[i]f no petitioner remains in the inter partes review, the Office may terminate the review or proceed to a final written decision under section 318(a).” CB/DR is the sole petitioner remaining in this review. The Board has discretion to terminate this review with respect to Fontem. The panel entered a Decision to institute trial on March 12, 2015 (Paper 6). Fontem filed a Patent Owner Response on July 13, 2015 (Paper 22). In the Joint Motion to Terminate, the parties represent the following: Here, IPR2014-01529 should be terminated with respect to Petitioner CB/DR because the Board has not decided the merits of IPR2014-01529 and Patent Owner and Petitioner CB/DR jointly request termination. IPR2014-01529 should also be terminated in its entirety because of the strong public policy and expectation that IPRs will terminate upon settlement prior to a decision on the merits. Specifically, no petitioner will remain in IPR2014-01529 upon Petitioner CB/DR’s termination . . . Patent Owner and Petitioner CB/DR have resolved IPR2014-01529 and related litigation through settlement. Petitioner CB/DR has not yet filed a reply, and the Board has not heard oral argument or issued a decision. As such, termination would save significant further expenditures of resources by the Board and Patent Owner and Petitioner CB/DR. Joint Motion to Terminate 2–3. Upon consideration of the circumstances of this case, the panel has determined to terminate this inter partes review as to both CB/DR and Fontem without rendering a final written decision. IPR2014-01529 Patent 8,689,805 B2 3 III. Order It is ORDERED that the Joint Motion to Terminate this proceeding in IPR2014-01529 (Paper 37) is granted, and this proceeding is hereby terminated; and FURTHER ORDERED that, as was requested timely by the parties (Paper 38), the settlement agreement and license agreement (Exhibit 2017) will be treated as business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). IPR2014-01529 Patent 8,689,805 B2 4 For PETITIONER: David L. Fehrman Mehran Arjomand Alex S. Yap MORRISON & FOERSTER LLP dfehrman@mofo.com marjomand@mofo.com ayap@mofo.com Charles D. Larsen J. Steven Baughman Megan F. Raymond Benjamin H. Huh ROPES & GRAY LLP charles.larsen@ropesgray.com steven.baughman@ropesgray.com megan.raymond@ropesgray.com benjamin.huh@ropesgray.com For PATENT OWNER: Michael Wise Joseph P. Hamilton PERKINS COIE LLP mwise@perkinscoie.com jhamilton@perkinscoie.com Copy with citationCopy as parenthetical citation