John's Lone Star Distribution, Inc.v.Thermolife International, LLCDownload PDFPatent Trial and Appeal BoardJun 16, 201513038537 (P.T.A.B. Jun. 16, 2015) Copy Citation Trials@uspto.gov Paper 35 Tel: 571-272-7822 Entered: June 16, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ JOHN’S LONE STAR DISTRIBUTION, INC., Petitioner, v. THERMOLIFE INTERNATIONAL, LLC, Patent Owner. ____________ Case IPR2014-01201 Patent 8,455,531 B2 ____________ Before JACQUELINE WRIGHT BONILLA, SHERIDAN K. SNEDDEN, and ZHENYU YANG, Administrative Patent Judges. BONILLA, Administrative Patent Judge. ORDER Termination of the Proceeding 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72 IPR2014-01201 Patent 8,455,531 B2 2 On June 5, 2015, the parties filed a joint motion to terminate this proceeding (Paper 33), along with a true copy of their written settlement agreement (Ex. 2024). The parties indicated in their joint motion that they have reached an agreement to terminate this proceeding pertaining to U.S. Patent No. 8,455,531 B2 (“the ’531 patent”). Paper 33, 2. On the same day, the parties also filed another joint motion requesting that the settlement agreement be treated as business confidential information and kept separate from the file of the ’531 patent. Paper 34, 2. 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.” We instituted a trial in this proceeding as to claims 1–3, 5, 7–11, 14, 15, 17, 18, 22, 25, 27–31, 34, 35, 37, 38, 42, 44, 46–50, 53, 54, 56, 57, and 61 of the ’531 patent (Paper 12) on February 2, 2015, but we have not decided yet the merits in relation to this proceeding. Further, under 37 C.F.R. § 42.74(b), “[a]ny agreement or understanding between the parties made in connection with, or in contemplation of, the termination of a proceeding shall be in writing and a true copy shall be filed with the Board before the termination of the trial.” As the parties have filed a true copy of their written settlement agreement, which constitutes the entire agreement between the parties with respect to this inter partes review (Ex. 2024, 2), we determine that it is appropriate to terminate this proceeding without rendering a final written decision as to the patentability of claims 1–3, 5, 7–11, 14, 15, 17, 18, 22, 25, 27–31, 34, 35, IPR2014-01201 Patent 8,455,531 B2 3 37, 38, 42, 44, 46–50, 53, 54, 56, 57, and 61 of the ’531 patent. See 37 C.F.R. §§ 42.72, 42.74. As requested by the parties, the settlement agreement will be treated as business confidential information and kept separate from the file of the ’531 patent. 37 C.F.R. § 42.74(c). Accordingly, it is ORDERED that the parties’ joint request that the settlement agreement be treated as business confidential information is GRANTED; and FURTHER ORDERED that the joint motion to terminate the proceeding is GRANTED; and FURTHER ORDERED that the proceeding is TERMINATED. IPR2014-01201 Patent 8,455,531 B2 4 PETITIONER: John Rollins jfr@burchdallmann.com Andrew Dallmann asd@burchdallmann.com PATENT OWNER: Joseph Lucci jlucci@bakerlaw.com William Smith wsmith@bakerlaw.com David Farsiou dfarsiou@bakerlaw.com Copy with citationCopy as parenthetical citation