OSSEO IMAGING, LLC

Patent Trials and Appeals Board

Sep 10, 2020

IPR2020-00659 (P.T.A.B. Sep. 10, 2020)

Trials@uspto.gov Paper No. 14
571.272.7822 Entered: September 10, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

KAVO DENTAL TECHNOLOGIES, LLC,
Petitioner,
v.
OSSEO IMAGING, LLC,
Patent Owner.
____________

IPR2020-00659 (Patent 8,498,374 B2)
IPR2020-00671 (Patent 6,381,301 B1)
IPR2020-00672 (Patent 6,944,262 B2)1
____________

Before GEORGIANNA W. BRADEN, NABEEL U. KHAN, and
SCOTT B. HOWARD, Administrative Patent Judges.

HOWARD, Administrative Patent Judge.

TERMINATION
Due to Settlement After Institution of Trial
35 U.S.C. § 317; 37 C.F.R. § 42.74

1 This Order applies to each of the above-identified proceedings. We
exercise our discretion to issue one Order to be docketed in each proceeding.
The parties, however, are not authorized to use this caption for any
subsequent papers.
IPR2020-00659 (Patent 8,498,374 B2)
IPR2020-00671 (Patent 6,381,301 B1)
IPR2020-00672 (Patent 6,944,262 B2)

2
I. INTRODUCTION
On August 20, 2020, Petitioner and Patent Owner (“Parties”) filed a
Joint Motion to Terminate Proceeding in each of the above-identified
proceedings (“Motions”). Paper 12.2 The Board authorized filing the
Motions in an email dated August 19, 2020. The Parties also filed, in each
of the above-identified proceedings, a Joint Motion (“Requests”) (Paper 13)
to treat their Settlement Agreement (Ex. 1040) as business confidential
information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
II. DISCUSSION
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 the patent owner, unless the Office has decided
the merits of the proceeding before the request for termination is filed.”
35 U.S.C. § 317(a) also provides that if no petitioner remains in the inter
partes review, the Office may terminate the review.
The Parties represent that they have reached an agreement to jointly
seek termination of the above-identified inter partes review proceedings,
and that the filed copies of the Settlement Agreement are true and complete
copies. Paper 12, 2. The Parties further represent that they have resolved
the dispute regarding the patents at issue in the above-identified proceedings
and the related litigation.3 Id. at 4.

2 The papers and exhibits filed in these proceedings are substantively the
same. We cite to the record in IPR2020-00659, unless otherwise noted.
3 Osseo Imaging, LLC v. Kavo Dental Technologies, LLC, Case No. 3:19-cv-
00174 (W.D.N.C.).
IPR2020-00659 (Patent 8,498,374 B2)
IPR2020-00671 (Patent 6,381,301 B1)
IPR2020-00672 (Patent 6,944,262 B2)

3
We instituted trial for each of the above-identified inter partes review
proceedings on June 10, 2020. See Paper 10. We have not decided yet the
merits of these proceedings, and final written decisions have not been
entered. Notwithstanding that these proceedings have moved beyond the
preliminary stage, the Parties have shown adequately that the termination of
the proceedings is appropriate because the parties have entered into a
settlement agreement and jointly seek termination of the proceedings far in
advance of our deadline to issue a final written decision and termination will
save administrative and judicial resources. Under these circumstances, we
determine that good cause exists to terminate the proceedings with respect to
the Parties.
Regarding the Parties’ Request to treat the Settlement Agreement as
business confidential information and be kept separate from the file of the
respective patents involved in the above-identified proceedings, we find that
the Settlement Agreement contains confidential business information
regarding the terms of settlement between the Parties. Thus, we determine
that good cause exists to treat the Settlement Agreement as business
confidential information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
§ 42.74(c).
This Order does not constitute a final written decision pursuant to
35 U.S.C. § 318(a).
III. ORDER
Accordingly, it is:
ORDERED that the Joint Motions to Terminate (IPR2020-00659,
Paper 12; IPR2020-00671, Paper 12; and IPR2020-00672, Paper 12) are
granted, and that IPR2020-00659, IPR2020-00671, and IPR2020-00672 are
IPR2020-00659 (Patent 8,498,374 B2)
IPR2020-00671 (Patent 6,381,301 B1)
IPR2020-00672 (Patent 6,944,262 B2)

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terminated with respect to Petitioner and Patent Owner pursuant to
35 U.S.C. § 317(a) and 37 C.F.R. § 42.72; and
FURTHER ORDERED that the Joint Motions (IPR2020-00659, Paper
13; IPR2020-00671, Paper 13; and IPR2020-00672, Paper 13) to treat the
Settlement Agreement (IPR2020-00659, Ex. 1040; IPR2020-00671, Ex.
1040; and IPR2020-00672, Ex. 1040) as business confidential information
pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) are granted.

IPR2020-00659 (Patent 8,498,374 B2)
IPR2020-00671 (Patent 6,381,301 B1)
IPR2020-00672 (Patent 6,944,262 B2)

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For PETITIONER:

Aaron Maurer
amaurer@wc.com

Andrew Trask
atrask@wc.com

For PATENT OWNER:

Seth Ostrow
sho@msf-law.com

Antonio Papageorgiou
ap@msf-law.com