Fifth Third Bankv.Leon StamblerDownload PDFPatent Trial and Appeal BoardMar 17, 20148747174 (P.T.A.B. Mar. 17, 2014) Copy Citation Trials@uspto.gov Paper 9 Tel: 571-272-7822 Entered: March 17, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ FIFTH THIRD BANK Petitioner v. LEON STAMBLER Patent Owner _______________ Case IPR2014-00244 U.S. Patent 5,793,302 _______________ Before THOMAS L. GIANNETTI, BRYAN F. MOORE, and TRENTON A. WARD, Administrative Patent Judges. WARD, Administrative Patent Judge. ORDER Motion to Terminate 37 C.F.R. § 42.72 IPR2014-00244 Patent 5,793,302 2 On March 10, 2014, the parties filed a joint motion to terminate the trial proceedings under 35 U.S.C. § 317(a). Along with the motion, the parties filed a copy of a document they described as the written settlement agreement, as well as a separate joint request to treat the settlement agreement as business confidential information under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 8, 1. 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.” The parties stated in their motions that they “have reached a settlement regarding their dispute and have agreed to terminate the IPR Proceeding.” Paper 8, 1. Furthermore, a trial has not been instituted in this proceeding. The joint motion indicates that on March 6, 2014, the Patent Owner filed a motion to dismiss the related district court litigation between the parties involving the patent at issue in this proceeding, U.S. Patent No. 5,793,302. Paper 8, 3. Furthermore, the joint motion indicates that all other related litigation matters identified in the Patent Owner’s Mandatory Notices (Paper 6) have been dismissed. Id. The parties are reminded that the Board is not a party to the settlement, and may independently identify any question of patentability. 37 C.F.R § 42.74(a). Generally, however, 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. 48756, 48768 (Aug. 14, 2012). These proceedings are still in the preliminary stages, as the Board has not instituted a trial. The Board is persuaded IPR2014-00244 Patent 5,793,302 3 that, under these circumstances, it is appropriate to terminate this proceeding without rendering a final written decision. 37 C.F.R. § 42.72. Accordingly, it is: ORDERED that the joint motion to terminate this proceeding is GRANTED and this proceeding is hereby terminated; FURTHER ORDERED that the parties’ joint request that the settlement agreement (Ex. 1019) be treated as business confidential information, kept separate from the file of the involved patent, and made available only to Federal Government agencies on written request, or to any person on a showing of good cause, under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is GRANTED. IPR2014-00244 Patent 5,793,302 4 PETITIONER: Edward J. Benz PAUL HASTINGS joebenz@paulhastings.com PATENT OWNER: Robert P. Greenspoon Joseph C. Drish FLACHSBART & GREENSPOON, LLC rpg@fg-law.com jcd@fg-law.com Copy with citationCopy as parenthetical citation