Sorna Corporation

Patent Trials and Appeals Board

Jul 7, 2020

IPR2020-00766 (P.T.A.B. Jul. 7, 2020)

Trials@uspto.gov Paper 13
571-272-7822 Date: July 7, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

NAUTILUS MEDICAL, INC.,
Petitioner,
v.
SORNA CORPORATION,
Patent Owner.

IPR2020-00766
Patent 8,045,214 B2

Before KRISTEN L. DROESCH, CHRISTA P. ZADO, and
SHEILA F. McSHANE, Administrative Patent Judges.

McSHANE, Administrative Patent Judge.

DECISION
Settlement Prior to Trial
37 C.F.R. § 42.74

IPR2020-00766
Patent 8,045,214 B2
2
On July 2, 2020, Petitioner and Patent Owner filed a Joint Motion to
Terminate Pursuant to 35 U.S.C. § 317.1 Paper 12 (“Motion”). In the
Motion, the parties request that a confidential settlement agreement (Ex.
2001) be treated as business confidential information kept separate from the
file of the involved patent. See id.
Generally, the Board expects that a proceeding will terminate after the
filing of a settlement agreement, if the settlement agreement includes all
parties. See, e.g., PTAB Consolidated Trial Practice Guide 86 (July 2019).
The parties state that they have reached an agreement to terminate this
proceeding. Motion 1. The parties represent that the settlement agreement
between the parties “has been made in writing, and a true and correct copy
shall be filed with this this Office.” Id. The parties further state that “[t]he
settlement agreement is the only agreement between the parties associated
with the settlement of the above captioned inter partes review, and no other
collateral agreements exist.” Id.
This proceeding is in its early stages. Patent Owner has not filed a
preliminary response. There has been no decision on whether to institute
inter partes review.
At this early stage, we determine that termination is warranted for the
reasons stated in the Motion to Terminate.
We further determine that the Settlement Agreement (Ex. 2001) filed
by the parties constitutes business confidential information. Therefore, we

1 The parties had earlier filed another Motion to Terminate (Paper 9), as well
as a confidential settlement agreement (Paper 10). The Motion was denied
without prejudice, and the parties were permitted to file a revised Motion to
Terminate to address some deficiencies and to also refile the confidential
settlement agreement as an exhibit. See Paper 11.
IPR2020-00766
Patent 8,045,214 B2
3
find there is good cause to grant the parties’ request to treat the Settlement
Agreement as business confidential and kept separate from the files of the
’214 patent. Further, Exhibit 2001 replaces Paper 10 in the Board’s
electronic filing system, and Paper 10 shall therefore be expunged.
Accordingly, it is
ORDERED that the Motion to Terminate is granted;
FURTHER ORDERED that this proceeding is terminated with respect
to both Petitioner and Patent Owner;
FURTHER ORDERED that Paper 10 be expunged; and
FURTHER ORDERED that the parties’ request to treat the
Settlement Agreement as business confidential and kept separate is granted,
and Exhibit 2001 shall be treated as business confidential and kept separate
from the files of the ’214 patent, consistent with 37 C.F.R. § 42.74(b).
IPR2020-00766
Patent 8,045,214 B2
4
FOR PETITIONER:
Edward M. Roney IV
Smith Anderson
eroney@smithlaw.com

Robert Goozner
Goozner Intellectual Property Law
robert.goozner2@gmail.com

FOR PATENT OWNER:
Alexander Farrell
F.S. Farrell, LLC
afarrell@bestlaw.com