Freedom Innovations, LLCv.Blatchford Products Limited

Patent Trial and Appeal Board

Dec 14, 2015

14073394 (P.T.A.B. Dec. 14, 2015)

Trials@uspto.gov Paper No.17
571-272-7822 Entered: December 14, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

FREEDOM INNNOVATIONS, LLC,
Petitioner,

v.

BLATCHFORD, INC., BLATCHFORD PRODUCTS LTD., &
CHAS. A. BLATCHFORD & SONS, LTD.,
Patent Owner.
____________

Case IPR2015-00640
Patent 8,740,991 B2
____________

Before MEREDITH C. PETRAVICK, HYUN J. JUNG, and
CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.

JUNG, Administrative Patent Judge.

ORDER
Termination of the Proceeding
35 U.S.C. § 317 and 37 C.F.R. § 42.72

IPR2015-00640
Patent 8,740,991 B2

2
Pursuant to authorization by the Board via email sent November 13,
2015, Freedom Innovations, LLC (“Petitioner”) and Blatchford Inc.,
Blatchford Products Ltd., and Chas. A. Blatchford & Sons, Ltd.
(collectively, “Patent Owner”) filed a Joint Motion to Terminate Proceeding
(Paper 14, “Mot.”) and a Joint Request that Settlement Agreement be
Treated as Business Confidential Information and Kept Separate Under 35
U.S.C. § 317 (Paper 16).
Under 35 U.S.C. § 317(a), an inter partes review proceeding shall be
terminated with respect to any petitioner upon the request of the petitioner
and the patent owner, unless the Office has decided the merits of the
proceeding before the request for termination is filed. The present
proceeding is in an early stage. A Decision to Institute was entered July 31,
2015 (Paper 8). Patent Owner has not yet filed its Patent Owner Response.
The merits have not been decided, and this proceeding is eligible for
termination. See Mot. 2.
Under 35 U.S.C. § 317(b), any agreement or understanding between
Patent Owner and Petitioner, including any collateral agreements referred to
in such agreement or understanding, made in connection with, or in
contemplation of, the termination of the proceeding shall be in writing, and a
true copy of such agreement or understanding shall be filed in the Office.
Patent Owner and Petitioner state that they have settled their dispute and
have reached agreement to terminate this proceeding. Mot. 1. In support of
their joint motion, the parties filed Exhibit 1031 as a true copy of their
written agreement. Id.
Upon consideration of the facts in the case before us, we grant the
joint motion and terminate this proceeding as to both Petitioner and Patent
IPR2015-00640
Patent 8,740,991 B2

3
Owner without rendering a final written decision. 37 C.F.R. § 42.72. We
also grant the joint request to maintain Exhibit 1031 as business confidential
in accordance with 37 C.F.R. § 42.74(c).
ORDER
Accordingly, it is:
ORDERED that the Joint Motion to Terminate this proceeding is
granted and, accordingly, this proceeding is hereby terminated; and
FURTHER ORDERED that the parties’ Joint Request that the
agreement (Ex. 1031) submitted in support of the Joint Motion be treated as
business confidential information, to be kept separate from the file of U.S.
Patent No. 8,740,991 B2, and made available only under the provisions of
35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is granted.

IPR2015-00640
Patent 8,740,991 B2

4

PETITIONER:
James Barney
Daniel Chung
David Reese
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
James.Barney@finnegan.com
Daniel.Chung@finnegan.com
David.Reese@finnegan.com

PATENT OWNER:
Blas P. Arroyo
R. Flynt Strean
Christopher TL Douglas
ALSTON & BIRD LLP
blas.arroyo@alston.com
flynt.strean@alston.com
christopher.douglas@alston.com