Matrixx Initiatives, Inc.

Patent Trials and Appeals Board

Dec 9, 2020

IPR2020-01511 (P.T.A.B. Dec. 9, 2020)

Trials@uspto.gov Paper: 11
571-272-7822 Date: December 9, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

TRUTEK CORP.,
Petitioner,

v.

MATRIXX INITIATIVES, INC.
Patent Owner.
____________

IPR2020-01511; Patent 9,034,401 B2
IPR2020-01554; Patent 9,555,069 B2

____________

Before SUSAN L. C. MITCHELL, MICHELLE N. ANKENBRAND, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.

NEWMAN, Administrative Patent Judge.

DECISION
Settlement Prior to Institution of Trial
37 C.F.R. § 42.74
IPR2020-01511; Patent 9,034,401 B2
IPR2020-01554; Patent 9,555,069 B2

2
On August 27, 2020, Trutek Corporation (“Petitioner”) filed a Petition
seeking an inter partes review of claims 1–10 of U.S. Patent No. 9,034,401
B2 (“the ’401 patent”), beginning the IPR2020-001511 proceeding (“1511
proceeding”). 1511 proceeding Paper 2. On September 9, 2020, Petitioner
filed a second Petition seeking an inter partes review of claims 1–7 of U.S.
Patent No. 9,555,069 B2 (“the ’069 patent”), beginning the IPR2020-01554
proceeding (“1554 proceeding”). 1554 proceeding Paper 1.
With authorization of the Board, the parties filed a Joint Motion to
Dismiss the Petition (“Joint Motion”) in each case. 1511 proceeding
Paper 7; 1554 proceeding Paper 9. The parties explain that dismissal is
appropriate because they have reached an agreement that “completely
resolves all pending controversies between the Patent Owner and the
Petitioner concerning” the ’401 and the ’069 patents. 1511 proceeding
Paper 7, 2; 1554 proceeding Paper 9, 2.
The parties have filed a true copy of their written settlement
agreement (1511 proceeding Paper 8; 1554 proceeding Paper 10), and, in
each, they “certify that there are no other agreements or understandings, oral
or written, between them, including any collateral agreements, made in
connection with, or in contemplation of, the dismissal of the present
proceeding as set forth in 35 U.S.C. § 317(b),” 1511 proceeding Paper 8, 2;
1554 proceeding Paper 10, 2. In the Joint Motions, the parties also explain
that they are filing a joint motion to dismiss the related district court
litigation, Trutek Corp. v. Matrixx Initiatives, Inc., Case No. 3:19-cv-17647-
BRM-ZNQ (D.N.J. Sept. 5, 2019), in light of the settlement. 1511
proceeding Paper 7, 3; 1554 proceeding Paper 9, 3.
IPR2020-001511; Patent 9,034,401 B2
IPR2020-001554; Patent 9,555,069 B2

3
The parties correctly note that we have not entered a Decision on
Institution or decided the merits in either proceeding. 1511 proceeding
Paper 7, 3; 1554 proceeding Paper 9, 3.
Based on the foregoing, pursuant to 37 C.F.R. § 42.74, we determine
that it is appropriate to dismiss both Petitions and terminate the proceedings.
Additionally, the parties filed a joint request in each proceeding that
we treat the settlement agreement as business confidential information and
kept separate from the file of the involved patent. 1511 proceeding Paper 9;
1554 proceeding Paper 11. Pursuant to 35 U.S.C § 317(b) and 37 C.F.R.
§ 42.74, we also grant those requests.

ORDER
In accordance with the foregoing, it is hereby:
ORDERED that the Joint Motion to dismiss the Petition in each
proceeding is granted;
FURTHER ORDERED that the joint request for each settlement
agreement, 1511 proceeding Paper 9; 1554 proceeding Paper 11, to be
treated as business confidential information and kept separate from the file
of the respective involved patent under the provisions of 35 U.S.C. § 317(b)
and 37 C.F.R. § 42.74(c) is granted; and
FURTHER ORDERED that the proceedings are terminated due to
settlement.

IPR2020-001511; Patent 9,034,401 B2
IPR2020-001554; Patent 9,555,069 B2

4

For PETITIONER:

Stanley Kremen
PATENTS GROUP LLC
uspto@patentsgroup.com

For PATENT OWNER:

Michael Dokhanchy
KIRKLAND & ELLIS LLP
Reza.dokhanchy@kirkland.com