SMITH & NEPHEW, INC.v.BONUTTI SKELETAL INNOVATIONS LLC

Patent Trial and Appeal Board

Jan 17, 2014

08964167 (P.T.A.B. Jan. 17, 2014)

Trials@uspto.gov Paper 15
571-272-7822 Entered: January 17, 2014
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SMITH & NEPHEW, INC.
Petitioner

v.

BONUTTI SKELETAL INNOVATIONS LLC
Patent Owner
____________

Case IPR2013-00603
Patent 5,980,559

Before WILLIAM V. SAINDON, MICHAEL R. ZECHER and
RICHARD E. RICE, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

JUDGMENT
Termination of the Proceeding
37 C.F.R. § 42.73
Case IPR2013-00603
Patent 5,980,559

2
On January 9, 2014, the parties filed two joint motions (Papers 10 and
12) to terminate this proceeding. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72.
The parties also filed a copy of their written settlement agreement (Exhibit
2001), as well as two requests (Papers 11 and 13) to treat the settlement
agreement as business confidential information under 35 U.S.C. § 317(b)
and 37 C.F.R. § 42.74(c). The two joint motions to terminate this
proceeding, as well as the two requests to treat the settlement agreement as
business confidential information, are identical copies of each other. For
purposes of providing a clear record in this proceeding, the Board will
expunge the second joint motion (Paper 12) to terminate this proceeding,
along with the second request (Paper 13) to treat the settlement agreement as
business confidential information, because these documents are duplicates.
This proceeding is still in the preliminary stages. Patent Owner has
not yet filed its preliminary response and the Board has not instituted a trial.
The parties further represent that the related litigation between the parties
involving U.S. Patent No. 5,980,559 (“the ’559 patent”) has been dismissed
without prejudice. Paper 10 at 2-3. The parties identify three related
matters, two of which involve independent claim 24 of the ’559 patent, the
only claim challenged in this proceeding. Id. at 3-4. With respect to the two
related matters involving independent claim 24, the parties stipulate that it
has been more than one year since Patent Owner has served each defendant
with a complaint alleging infringement of the ’559 patent. Id. Under the
circumstances, the Board determines that it is appropriate to terminate this
proceeding without rendering either a decision to institute or a final written
decision. See 37 C.F.R. § 42.72.

Case IPR2013-00603
Patent 5,980,559

3
ORDER
In consideration of the foregoing, it is hereby:
ORDERED that, under 37 C.F.R. § 42.7(a), Papers 12 and 13 are
expunged from the record of this proceeding because they are duplicates of
Papers 10 and 11, respectively;
FURTHER ORDERED that the parties’ joint request that the
settlement agreement (Exhibit 2001) be treated as business confidential
information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is
GRANTED; and
FURTHER ORDERED that the joint motion to terminate the
proceeding is GRANTED and this proceeding is hereby terminated.
Case IPR2013-00603
Patent 5,980,559

4
PETITIONER:

David L. Cavanaugh
Jacob S. Oyloe
WILMER CUTLER PICKERING HALE and DORR LLP
David.Cavanaugh@wilmerhale.com
Jacob.Oyloe@wilmerhale.com

PATENT OWNER:

Cary Kappel
William Gehris
Davidson, Davidson & Kappel, LLC
ckappel@ddkpatent.com
wgehris@ddkpatent.com