Fifth Third Bankv.Leon Stambler

Patent Trial and Appeal Board

Mar 17, 2014

8747174 (P.T.A.B. Mar. 17, 2014)

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
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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.

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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