Sumitomo Chemical Companyv.CelgardDownload PDFPatent Trial and Appeal BoardJan 3, 201409546266 (P.T.A.B. Jan. 3, 2014) Copy Citation Trials@uspto.gov Paper 18 Tel: 571-272-7822 Entered: January 3, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ SUMITOMO CHEMICAL COMPANY Petitioner v. CELGARD Patent Owner _______________ Case IPR2013-00637 Patent 6,432,586 _______________ Before FRANCISCO C. PRATS, GRACE KARAFFA OBERMANN, and CHRISTOPHER L. CRUMBLEY, Administrative Patent Judges. OBERMANN, Administrative Patent Judge. JUDGMENT Termination of the Proceedings 37 C.F.R. § 42.73 Case IPR2013-00637 Patent 6,432,586 2 On December 27, 2013, pursuant to 35 U.S.C. § 317, the parties filed a joint motion to terminate this proceeding. Accompanying the motion, the parties filed a true copy of a settlement agreement along with a joint request to treat the settlement agreement as business confidential, to be kept separate from the patent file pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74. Generally, a motion will not be entered absent prior authorization of the Board. 37 C.F.R. § 42.20(b). Once parties enter into a settlement agreement, authorization to file a joint motion to terminate may be sought. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). The parties failed to follow the correct procedure, and filed the joint motion without prior authorization. However, based on the particular facts of this case, we discern no prejudice to either party or the public, and exercise our discretion to consider the filing of the joint motion itself to include the request to file. These cases are in the preliminary proceeding stage; no decision whether to institute a trial has been made. Based on the facts of the case, it is appropriate to terminate the proceedings. Therefore, the joint motion to terminate the proceeding is granted. Accordingly, it is ORDERED that the parties’ joint request that the settlement agreement be treated as business confidential information, to be kept separate from the patent file, is granted; FURTHER ORDERED that the joint motion to terminate the proceeding is granted; and FURTHER ORDERED that the proceeding is terminated. Case IPR2013-00637 Patent 6,432,586 3 For Petitioner: Aaron Ettelman aettelman@panitchlaw.com For Patent Owner: John Alemanni jalemanni@kilpatricktownsend.com Copy with citationCopy as parenthetical citation
