GN RESOUND ASv.Oticon A/S

Patent Trial and Appeal Board

Jan 12, 2016

12342241 (P.T.A.B. Jan. 12, 2016)

Trials@uspto.gov Paper 24
571-272-7822 Entered: January 12, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

GN RESOUND A/S,
Petitioner,

v.

OTICON A/S,
Patent Owner.
____________

Case IPR2015-00104
Patent 8,300,863 B2

Before MICHELLE R. OSINSKI, NEIL T. POWELL, and
FRANCES L. IPPOLITO, Administrative Patent Judges.

IPPOLITO, Administrative Patent Judge.

ORDER
Joint Motion to Terminate
35 U.S.C. § 317; 37 C.F.R. §§ 42.72, 42.74
IPR2015-00104
Patent 8,300,863 B2

2
On January 8, 2016, the parties filed a Joint Motion to Terminate
Proceeding (Paper 21) along with a true copy of a License Agreement1
(Paper 23) and a Joint Request to File Settlement Agreement as Business
Confidential Pursuant to 35 U.S.C. § 317 (Paper 22). The above filings were
authorized pursuant to an email sent by the Board on January 7, 2016.
Under 35 U.S.C. § 317(a), applicable to inter partes review
proceedings, a proceeding shall be terminated with respect to any petitioner
upon the joint 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. This matter is at a stage prior to its final hearing, with no
decision on the merits having been made.
Under 35 U.S.C. § 317(b), any agreement or understanding between
the Patent Owner and a 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. The Joint Motion to Terminate indicates that the parties request
termination of this proceeding pursuant to settlement, and have
memorialized the parties’ agreement with respect to termination of this
proceeding in the License Agreement. Paper 21, 1; Paper 23.
With respect to related matters, the parties have requested dismissal of

1 The parties refer to a “Settlement Agreement” attached as “Exhibit 1” to
the Joint Motion to Terminate. However, the License Agreement is filed as
Paper 23 and there is no Exhibit 1 in the record. Accordingly, we treat the
parties’ reference to the “Settlement Agreement” as citing the License
Agreement shown in Paper 23.
IPR2015-00104
Patent 8,300,863 B2

3
a related district court proceeding based on the License Agreement. Paper
21, 2. The parties further represent that claims 6–8 and 14 of the ’863 patent
are the subject of ex parte reexamination 90/013,592. Id. The parties
indicate that claims 6–8 and 14 are not at issue in the instant proceeding,
which involves claims 1, 4, 5, 11, 12, 16–20, and 25. Additionally, we note
that claims 9, 10, 15, and 21–24 of the ‘863 patent were the subject of
IPR2015-00103, which is no longer pending following the grant of adverse
judgment. IPR2015-00103, Paper 19.
Under these circumstances, we determine that it is appropriate to grant
the Joint Motion to Terminate the trial without rendering a final written
decision pursuant to 35 U.S.C. § 318(a). See 37 C.F.R. §§ 42.5(a), 42.72.
Accordingly, it is
ORDERED that the Joint Motion to Terminate Proceeding is granted;
FURTHER ORDERED that the License Agreement, Paper 23, be
treated as business confidential information, be designated “Board Only,”
and be kept separate from the file of the involved patent under the provisions
of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c); and
FURTHER ORDERED that the proceeding is terminated.

PETITIONER:

Scott A. McKeown
Greg Gardella
OBLON, MCCLELLAND, MAIER, & NEUSTADT LLP
cpdocketMcKeown@oblon.com
cpdocketGardella@oblon.com

IPR2015-00104
Patent 8,300,863 B2

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PATENT OWNER:

D. Richard Anderson
George S. Dolina
BIRCH, STEWART, KOLASCH & BIRCH, LLP
dra@bskb.com
gsd@bskb.com