Sealed Air Corporationv.Pregis Innovative Packaging, Inc.

Patent Trials and Appeals Board

Sep 12, 2014

10642938 - (D) (P.T.A.B. Sep. 12, 2014)

Trials@uspto.gov Paper 45
571-272-7822 Date: September 12, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SEALED AIR CORPORATION,
Petitioner,

v.

PREGIS INNOVATIVE PACKAGING, INC.,
Patent Owner.
____________

Cases: IPR2013-00554 (Patent No. RE38,745)
IPR2013-00555 (Patent No. RE38,745)
IPR2013-00556 (Patent No. 6,607,803)
IPR2013-00557 (Patent No. 7,047,705)
IPR2013-00558 (Patent No. 7,047,705)
____________

Before MICHAEL J. FITZPATRICK, CHRISTOPHER L. CRUMBLEY,
JON B. TORNQUIST, and JENNIFER M. MEYER, Administrative Patent Judges.

CRUMBLEY, Administrative Patent Judge.

JUDGMENT
Termination of the Proceeding
37 C.F.R. § 42.72

On September 11, 2014, pursuant to Board authorization, Petitioner Sealed
Air Corporation (“Sealed Air”) and Patent Owner Pregis Innovative Packaging,
Inc. (“Pregis”), filed joint motions to terminate these five related inter partes
IPR2013-00554 (Patent RE38,745) IPR2013-00557 (Patent 7,047,705)
IPR2013-00555 (Patent RE38,745) IPR2013-00558 (Patent 7,047,705)
IPR2013-00556 (Patent 6,607,803)

2

reviews. Paper 45.1 With the joint motions, the parties filed copies of their written
settlement agreement covering various matters involving the patents at issue in
these proceedings. Ex. 1019. The parties concurrently filed joint requests to have
the settlement agreement treated as confidential business information under 35
U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 46.
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.” In these proceedings, the
Board instituted trial on March 6, 2014 (Paper 13), but has not yet reached a
decision on the merits with respect to the patentability of any involved claim.
Accordingly, the requirement for terminating the reviews with respect to Sealed
Air, as Petitioner, is met.
Also under 35 U.S.C. § 317(a), “[i]f no petitioner remains in the inter partes
review, the Office may terminate the review or proceed to a final written decision
under section 318(a).” Sealed Air is the sole Petitioner. The Board, therefore, has
discretion to terminate these reviews with respect to Pregis. In their joint motions,
the parties contend that the trials are at a “sufficiently early stage,” as Sealed Air
has not yet filed its Replies to Pregis’ Patent Owner Responses, and no motions are
outstanding at this time. Paper 45, 2-3. The parties also note that they have agreed
to dismiss the co-pending district court action Pregis Innovative Packaging, Inc. v.
Sealed Air Corporation (D. Del. Civil Action No. 13-1084-LPS), involving the
patents and parties before us here. Id.

1 Unless otherwise noted, citations are to the record of IPR2013-00554; similar
papers may be found in the records of the other related proceedings.
IPR2013-00554 (Patent RE38,745) IPR2013-00557 (Patent 7,047,705)
IPR2013-00555 (Patent RE38,745) IPR2013-00558 (Patent 7,047,705)
IPR2013-00556 (Patent 6,607,803)

3

Based on the present record, we determine that it is appropriate to terminate
these inter partes reviews both as to Sealed Air and Pregis without rendering a
final written decision. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72.

In light of the foregoing, it is
ORDERED that the parties’ joint requests to have their settlement agreement
(IPR2013-00554, Ex. 1019; IPR2013-00555, Ex. 1019; IPR2013-00556, Ex. 1020;
IPR2013-00557, Ex. 1019; IPR2013-00558, Ex. 1012) treated as business
confidential information, to be kept separate from the patent file, are granted;
FURTHER ORDERED that the joint motions to terminate these proceedings
are granted; and
FURTHER ORDERED that these inter partes reviews are hereby
terminated.

IPR2013-00554 (Patent RE38,745) IPR2013-00557 (Patent 7,047,705)
IPR2013-00555 (Patent RE38,745) IPR2013-00558 (Patent 7,047,705)
IPR2013-00556 (Patent 6,607,803)

4

FOR PETITIONER:

Jason P. Cooper
Kirk T. Bradley
Christopher Kelly
ALSTON & BIRD LLP
jason.cooper@alston.com
kirk.bradley@alston.com
chris.kelly@alston.com

FOR PATENT OWNER:

Henry Lebowitz
Richard M. Koehl
FRIED, FRANK, HARRIS, SHRIVER
henry.lebowitz@friedfrank.com
richard.koehl@friedfrank.com

Chidambaram S. Iyer
SUGHRUE MION, PLLC
ciyer@sughrue.com