Apex Medical Corp.v.ResMed Limited

Patent Trial and Appeal Board

Sep 12, 2014

12368545 (P.T.A.B. Sep. 12, 2014)

Trials@uspto.gov Paper No. 29
Tel: 571-272-7822 Filed: September 12, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
APEX MEDICAL CORP.,
Petitioner,

v.

RESMED LIMITED,
Patent Owner.
_______________

Case IPR2013-00516
Patent 7,997,267

_______________

Before SCOTT E. KAMHOLZ, BARRY L. GROSSMAN, and
CARL M. DEFRANCO, Administrative Patent Judges.

KAMHOLZ, Administrative Patent Judge.

JUDGMENT
Termination of the Proceeding
37 C.F.R. § 42.74

IPR2013-00516
Patent 7,997,267

2

The parties filed a joint motion to terminate the instant proceeding
(Paper 26 (“Mot.”)) and a true copy of their written settlement agreement
(Ex. 2035) made in connection with the termination, in accordance with
35 U.S.C. § 317 and 37 C.F.R. § 42.74(b). The parties also jointly requested
that their settlement agreement be treated as business confidential
information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 27.
For the reasons provided below, the joint motion to terminate is
granted. The joint request that the settlement agreement be treated as
business confidential information is also granted.
While the parties may agree to settle their issues related to the
involved patent, the Board is not a party to the settlement and may determine
independently any question of patentability. 37 C.F.R. § 42.74(a).
Patent Owner has already filed a Response (Paper 14), and Petitioner
has filed a Reply (Paper 23), but the record is not yet closed, and the Board
has not yet decided the merits of this proceeding. The parties represent that
the ’267 patent is the subject of an exclusion order issued in ITC
investigation No. 337-TA-879, as well as a stayed district court action,
ResMed Inc. et al v. Apex Medical Corp. et al., No. 8:13-cv-00498
(C.D. Cal.). Mot. 5-7. The parties further represent that these matters are
covered by the settlement agreement. Id. at 6, 7.
The parties also represent that the ’267 patent is the subject of another
ITC investigation, No. 337-TA-890, and another district court action,
ResMed Inc. et al v. BMC Medical Co., Ltd. et al., No. 3:13-cv-0146
(S.D. Cal.), both of which remain ongoing. Mot. 8-9. Petitioner Apex
Medical Corp. is not a party to these other proceedings. Id.
IPR2013-00516
Patent 7,997,267

3

In view of the parties’ settlement agreement made in connection with
the termination in accordance with 35 U.S.C. § 317(b) and 37 C.F.R.
§ 42.74(b), we determine that it is appropriate to terminate the involvement
of Petitioner. Moreover, we determine that it also is appropriate to terminate
the proceeding with respect to Patent Owner, because we have not yet
decided the merits of this proceeding, and the record is not yet closed. As a
result, it is appropriate to enter judgment in the form of termination. See
37 C.F.R. § 42.2.
Accordingly, it is
ORDERED that the joint motion to terminate IPR2013-00516 is
granted, and this proceeding is hereby terminated as to all parties, including
Petitioner Apex Medical Corp. and Patent Owner ResMed Limited; and
FURTHER ORDERED that the joint request that the settlement
agreement be treated as business confidential information and be kept
separate from the patent files under 35 U.S.C. § 317(b) and 37 C.F.R.
§ 42.74(c) is granted.

IPR2013-00516
Patent 7,997,267

4

FOR PETITIONER:

Henry A. Petri, Jr.
James P. Murphy
Margaux Aviguetero
NOVAK DRUCE CONNOLLY BOVE + QUIGG LLP
henry.petri@novakdruce.com
james.murphy@novakdruce.com
margaux.aviguetero@novakdruce.com

FOR PATENT OWNER:

Stephen R. Schaefer
Timothy W. Riffe
Michael Kane
FISH & RICHARDSON P.C.
schaefer@fr.com
riffe@fr.com
IPR36784-0013IP1@fr.com