LaRose Industries, LLCv.Choon's Design Inc.

Patent Trials and Appeals Board

Jan 5, 2015

13227638 - (D) (P.T.A.B. Jan. 5, 2015)

Trial@uspto.gov Paper 9
Tel: 571-272-7822 Entered: January 5, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
LAROSE INDUSTRIES, LLC,
Petitioner,

v.
CHOON’S DESIGN INC.,
Patent Owner.
_______________

Case IPR2014-01353
Patent 8,485,565 B2
_______________

Before GRACE KARAFFA OBERMANN, JEREMY M. PLENZLER, and
JON B. TORNQUIST, Administrative Patent Judges.

PLENZLER, Administrative Patent Judge.

JUDGMENT
Termination of Proceeding
37 C.F.R. § 42.73

IPR2014-01353
Patent 8,485,565 B2

2

On December 31, 2014, Petitioner LaRose Industries, LLC
(“LaRose”) and Patent Owner Choon’s Design Inc. (“Choon’s”) filed a Joint
Motion to Terminate the instant proceeding. Paper 7. The parties also filed
a true copy of their Written Settlement Agreement, made in connection with
the termination of this proceeding, in accordance with 35 U.S.C. § 317(b)
and 37 C.F.R. § 42.74(b). Paper 8, 4–20.
1
Additionally, the parties
submitted a Joint Request to treat the Written Settlement Agreement as
business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R.
§ 42.74(c). Id. at 1.
As an initial matter, the Board authorized the parties to file the Joint
Motion to Terminate, and granted the parties’ request for extending the time
for filing the Joint Motion to Terminate, from December 19, 2014, to
December 30, 1014 (“the Revised Due Date”), in light of the unavailability
of Patent Review Processing System (“PRPS”) for two and a half days, and
the holidays. Paper 6; Exhibit 3001.
2
The parties’ Joint Motion to
Terminate, however, was filed a day later than the Revised Due Date.
A late action will be excused either on a showing of good cause or
upon a Board decision that consideration on the merits would be in the
interests of justice. 37 C.F.R. § 42.5(c)(3). The parties should have notified

1
The parties are reminded that the Written Settlement Agreement should
have been filed separately as an exhibit. See 37 C.F.R. § 42.6(a)(3)
(“[C]ombined documents are not permitted.”).
2
The e-mail communication regarding the parties’ request for an extension
of time is entered as Exhibit 3001.
IPR2014-01353
Patent 8,485,565 B2

3

the Board of the late filing or sought prior authorization for a one-day
extension of time. Nevertheless, upon weighing the impact of the late filing
on the instant proceeding against the prejudice to the parties of not
considering the Joint Motion to Terminate, we determine that it would be in
the interests of justice, under the present circumstances, to excuse the
parties’ late action.
Generally, the Board expects that a proceeding will terminate after the
filing of a settlement agreement. See, e.g., Office Patent Trial Practice
Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). LaRose filed a
Petition for inter partes review of U.S. Patent No. 8,485,565 B2 (Ex. 1001,
“the ’565 patent”) on August 20, 2014. Paper 1. In response, Choon’s
timely filed a Patent Owner Preliminary Response on December 2, 2014.
Paper 5. The Board, however, has not determined, under 35 U.S.C. § 314,
whether to institute inter partes review as to the ’565 patent. As no trial has
been instituted based on LaRose’s Petition, this proceeding is in the
preliminary proceeding
3
stage. Given the particular facts in the instant
proceeding, we conclude that it is appropriate to enter judgment.
4

3
A preliminary proceeding begins with the filing of a petition for instituting
a trial and ends with a written decision as to whether a trial will be instituted.
37 C.F.R. § 42.2.
4
A judgment means a final written decision by the Board, or a termination
of a proceeding. 37 C.F.R. § 42.2.
IPR2014-01353
Patent 8,485,565 B2

4

Accordingly, it is
ORDERED that the Joint Motion to Terminate the instant proceeding
is granted;
FURTHER ORDERED that the instant proceeding is terminated as to
all parties; and
FURTHER ORDERED that the Joint Request that the Written
Settlement Agreement be treated as business confidential information kept
separate from the patent file, and made available only to Federal
Government agencies on written request, or to any person on a showing of
good cause, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is
granted.

IPR2014-01353
Patent 8,485,565 B2

5

For PETITIONER:
Ralph W. Selitto, Jr.
John K. Kim
Joseph Agostino
GREENBERG TRAURIG, LLP
selittor@gtlaw.com
kimjo@gtlaw.com
agostinoj@gtlaw.com

For PATENT OWNER:

John M. Siragusa
Theodore Olds
Anthony P. Cho
CARLSON, GRASKEY & OLDS, P.C.
jsiragusa@cgolaw.com
tolds@cgolaw.com
acho@cgolaw.com