JT International S.A.v.Fontem Holdings 1 B.V.

Patent Trial and Appeal Board

Dec 14, 2015

13079937 (P.T.A.B. Dec. 14, 2015)

Trials@uspto.gov Paper 12
571-272-7822 Entered: December 14, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

JT INTERNATIONAL, S.A.,
Petitioner,
v.
FONTEM HOLDINGS 1 B.V.,
Patent Owner.
____________________

Case IPR2015-01513 (Patent 8,375,957 B2)
Case IPR2015-01578 (Patent 8,689,805 B2)
Case IPR2015-01587 (Patent 8,365,742 B2)
Case IPR2015-01604 (Patent 8,863,752 B2)1
____________________

Before JOSIAH C. COCKS, JAQUELINE WRIGHT BONILLA,
GRACE KARAFFA OBERMANN, DONNA M. PRAISS, BRIAN J.
MCNAMARA, RAMA G. ELLURU, and JO-ANNE M. KOKOSKI,
Administrative Patent Judges.

PER CURIUM.

ORDER
Dismissing Petitions
37 C.F.R. §§ 42.71(a), 42.74

1 This order addresses issues common to all cases; therefore, we issue a
single order to be entered in each proceeding. The parties, however, are not
authorized to use this heading.

IPR2015-01513 (Patent 8,375,957 B2)
IPR2015-01578 (Patent 8,689,805 B2)
IPR2015-01587 (Patent 8,365,742 B2)
IPR2015-01604 (Patent 8,863,752 B2)

2

The parties filed a joint motion to terminate each proceeding
identified in the caption. Paper 11.2 Along with the motion, the parties filed
a copy of a document they describe as their written settlement agreement
(Ex. 2029), as well as a separate joint request to treat the settlement
agreement as business confidential information. Paper 12; see 37 C.F.R.
§ 42.74(c) (a party to a settlement may request that the settlement agreement
be treated as business confidential and be kept separate from the patent file).
The parties represent that the settlement agreement resolves all disputes
between the parties that involve the patents-at-issue. Paper 11, 4–5.
The cases are in a preliminary stage. The Board has not yet issued
decisions on whether to institute the proceedings.
We are persuaded that, under these circumstances, it is appropriate to
dismiss the petition in each proceeding. 35 C.F.R. § 42.71(a). This paper
does not constitute a final written decision pursuant to 35 U.S.C. § 318(a).

It is
ORDERED that the joint motion to terminate is granted and the
petition is dismissed in each proceeding;

2 Substantially similar papers and exhibits were filed in each proceeding.
For convenience, we refer to paper and exhibit numbers in IPR2015-01513.
IPR2015-01513 (Patent 8,375,957 B2)
IPR2015-01578 (Patent 8,689,805 B2)
IPR2015-01587 (Patent 8,365,742 B2)
IPR2015-01604 (Patent 8,863,752 B2)

3

FURTHER ORDERED that the joint request to treat the settlement
agreement as business confidential information, to be kept separate from the
patent file, is granted in each proceeding.

PETITIONER:
Erik Swenson
erik.g.swenson@nortonrosefulbright.com

George Jordan
george.jordan@nortonrosefulbright.com

PATENT OWNER:

Michael Wise
mwise@perkinscoie.com

Joseph Hamilton
jhamilton@perkinscoie.com