Superior Communications, Inc.v.M-Edge Accessories, LLC

Patent Trial and Appeal Board

Dec 17, 2015

13759494 (P.T.A.B. Dec. 17, 2015)

Trials@uspto.gov Paper No. 10
571-272-7822
Paper No. 11
Date Entered: December 17, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SUPERIOR COMMUNICATIONS, INC. and
PURE GEAR INTERNATIONAL CORPORATION,
Petitioner,

v.

M-EDGE INTERNATIONAL CORPORATION AND M-EDGE
ACCESSORIES, LLC,
Patent Owner.
____________

Case IPR2016-00048
Patent 8,887,910 B2
____________

Before MICHAEL P. TIERNEY, JOSIAH C. COCKS, and
MICHAEL L. WOODS, Administrative Patent Judges.

WOODS, Administrative Patent Judge.
TERMINATION
Dismissing the Petition
37 C.F.R. §§ 42.5(a), 42.71(a)

IPR2016-00048
Patent 8,887,910 B2

2

On December 7, 2015, the Board authorized the parties to file a joint
motion to terminate after the parties informed the Board—earlier that day—
that they settled their dispute. On December 8, 2015, and pursuant to 35
U.S.C. § 317(a) and 37 C.F.R. §§ 42.72 and 42.74, the parties filed a joint
motion to terminate along with a copy of a related settlement agreement.
Paper 8, 1 (“The parties have settled their dispute, and have reached
agreement to terminate this Inter Partes Review”); Ex. 1020 (“Settlement
Agreement”). In the joint motion, the parties represent that the filed
settlement agreement is “a true and correct copy” and resolves this inter
partes review and a related district court case, M-Edge Int’l Corp. v.
Superior Comm., Inc., Case No. 1:14-cv-03630-WDQ (D. Md.). Paper 8, 1;
Ex. 1021 (“Joint Stipulation of Dismissal Without Prejudice” of referenced
district court case).
The parties also filed a joint request that the settlement agreement be
treated as business confidential information pursuant to 35 U.S.C. § 317(b)
and 37 C.F.R. § 42.74(c). Paper 9, 1.
We have not instituted trial in this proceeding. Thus, this proceeding
is in its initial stages. The parties indicate that they “jointly request
termination of the Inter Partes Review.” Paper 8, 1. Under these
circumstances, we determine that it is appropriate to dismiss the petition.
See 37 C.F.R. §§ 42.5(a), 42.71(a). This paper does not constitute a final
written decision pursuant to 35 U.S.C. § 318(a).
It is
ORDERED that the parties’ “Joint Motion to Terminate Proceeding”
for Inter Partes Review of U.S. Patent No. 8,887,910 B2 (Paper 8) is
granted;
IPR2016-00048
Patent 8,887,910 B2

3

FURTHER ORDERED that the Petition for Inter Partes Review of
the above-referenced patent is dismissed; and
FURTHER ORDERED that, as was requested timely by the parties
(Paper 9), the settlement agreement (Ex. 1020) will be treated as business
confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).

IPR2016-00048
Patent 8,887,910 B2

4

PETITIONER:

John. G. Smith
Christopher Bruenjes
DRINKER BIDDLE & REATH LLP
John.Smith@dbr.com
Christopher.Bruenjes@dbr.com

PATENT OWNER:

Ketan S. Vakil
Sina S. Aria
SNELL & WILMER LLP
kvail@swlaw.com
saria@swlaw.com