Esselte Corporationv.DYMO B.V.B.A.

Patent Trial and Appeal Board

Jan 6, 2016

12575259 (P.T.A.B. Jan. 6, 2016)

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