SMITH & NEPHEW, INC.v.BONUTTI SKELETAL INNOVATIONS LLCDownload PDFPatent Trial and Appeal BoardJan 17, 201408964167 (P.T.A.B. Jan. 17, 2014) Copy Citation 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 Copy with citationCopy as parenthetical citation