Esselte Corporationv.DYMO B.V.B.A.Download PDFPatent Trial and Appeal BoardJan 6, 201612575259 (P.T.A.B. Jan. 6, 2016) Copy Citation Trials@uspto.gov Paper 34 Tel: 571.272.7822 Entered: January 6, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD ESSELTE CORPORATION, ESSELTE AB, AND ESSELTE LEITZ GMBH & CO. KG, Petitioner, v. DYMO B.V.B.A. AND SANFORD L.P., Patent Owner. Case IPR2015-00766 (Patent 7,990,567 B2) Case IPR2015-00771 (Patent 7,140,791 B2) Case IPR2015-00779 (Patent 6,152,623) Case IPR2015-00781 (Patent 6,890,113 B2)1 Before DAVID C. MCKONE, BARBARA A. PARVIS, and JO-ANNE M. KOKOSKI, Administrative Patent Judges. PARVIS, Administrative Patent Judge. DECISION Termination Pursuant to Settlement 35 U.S.C. § 317(a) and 37 C.F.R. §§ 42.72–42.74 1 This Decision addresses the same issue in these four inter partes reviews. We exercise our discretion to issue one Order to be docketed in each case. The parties, however, are not authorized to use this style of filing in subsequent papers, without prior authorization. IPR2015-00766 (Patent 7,990,567), IPR2015-00771 (Patent 7,140,791), IPR2015-00779 (Patent 6,152,623), IPR2015-00781 (Patent 6,890,113) 2 On January 4, 2016, and pursuant to 35 U.S.C. § 317(a), the parties filed a joint motion to terminate in each of the following proceedings: IPR2015-00766, IPR2015-00771, IPR2015-00779, and IPR2015-00781. See e.g., IPR2015-00766, Paper 32.2 Along with the joint motion, the parties filed a Settlement Agreement (see, e.g., Ex. 1009). The parties represent that they have settled their disputes and memorialized their settlement in the Settlement Agreement. See e.g., IPR2015-00766, Paper 32. In the joint motions, the parties also represent that the settlement agreement resolves all disputes in the related lawsuit. Id. These proceedings are at an early stage. In each of the proceedings, Petitioner has not filed a Reply to the Patent Owner Response. Upon consideration of the facts before us, we determine that it is appropriate to terminate the proceedings with respect to both parties. See 35 U.S.C. § 317(a); 37 C.F.R. §§ 42.72, 42.74. Therefore, the joint motions to terminate the proceedings are granted. This paper does not constitute a final written decision pursuant to 35 U.S.C. § 318(a). The parties also filed in each case a joint request that the settlement agreement be treated as business confidential information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). See e.g., IPR2015-00766, Paper 33. 2 Unless otherwise noted, citations herein will be to IPR2015-00766. IPR2015-00766 (Patent 7,990,567), IPR2015-00771 (Patent 7,140,791), IPR2015-00779 (Patent 6,152,623), IPR2015-00781 (Patent 6,890,113) 3 ORDER For the foregoing reasons, it is: ORDERED that the parties’ joint request in each proceeding that the settlement agreement (IPR2015-00766, Ex. 1009; IPR2015-00771, Ex. 1015; IPR2015-00779, Ex. 1012; IPR2015-00781, Ex. 1022) be treated as business confidential information, to be kept separate from the patent file is granted; and FURTHER ORDERED that the joint motions to terminate in each of the IPR2015-00766, IPR2015-00771, IPR2015-00779, and IPR2015-00781 proceedings are granted and each of the proceedings is terminated with respect to both Petitioner and Patent Owner. PETITIONER: Douglas J. Kline dkline@goodwinprocter.com Sumedha Ahuja sahuja@goodwinprocter.com Eleanor M. Yost eyost@goodwinprocter.com Robert Frederickson III rfrederickson@goodwinprocter.com PATENT OWNER: W. Karl Renner axf@fr.com Thad C. Kodish IPR41578-0003IP1@fr.com Copy with citationCopy as parenthetical citation