ATRIUM MEDICAL CORPORATION v DAVOL INC.

Patent Trials and Appeals Board

Apr 15, 2014

11508447 - (D) (P.T.A.B. Apr. 15, 2014)

Trial@uspto.gov Paper No. 64
571-272-7822 Entered: April 15, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

ATRIUM MEDICAL CORPORATION
Petitioner

v.

DAVOL INC.
Patent Owner

____________

Case IPR2013-00189
Patent 7,785,334 B1
____________

Before JAMESON LEE, SCOTT KAMHOLZ, GEORGIANNA W. BRADEN,
and JENNIFER M. MEYER, Administrative Patent Judges.

BRADEN, Administrative Patent Judge.

JUDGMENT
Termination of the Proceeding
35 U.S.C. § 317(a) and 37 C.F.R. § 42.72
Case IPR2013-00189
Patent 7,785,334 B1

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On April 3, 2014, the parties filed a joint motion (Paper No. 60) to terminate
this inter partes review. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. With the
motion, the parties filed a copy of a document they described as the written
settlement agreement (Ex. 2338), and jointly requested to treat the settlement
agreement as business confidential information under the provisions of 35 U.S.C.
§ 317(b) and 37 C.F.R. § 42.74(c).
In their joint motion, the parties state that they have settled all of their
disputes involving the 7,785,334 (“the ’334 Patent”), and foreign counterparts of
the ’334 Patent, including all litigation and patent office proceedings (U.S. and
foreign) related thereto. Paper No. 60 at 1.
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 patent owner, unless the Office has decided the merits of the
proceeding before the request for termination is filed.” Per 37 C.F.R. § 42.74(b),
“[a]ny agreement or understanding between the parties made in connection with, or
in contemplation of, the termination of a proceeding shall be in writing and a true
copy shall be filed with the Board before termination of the trial.” The
requirements for termination with respect to the petitioner (“Atrium”) have been
met.
Under 35 U.S.C. § 317(a), “[i]f no petitioner remains in the inter partes
review, the Office may terminate the review or proceed to a final written decision
under section 318(a).” Atrium is the sole petitioner. The Board has discretion to
terminate this review with respect to the patent owner (“Davol”).
Generally, the Board expects that a proceeding will terminate after the filing
of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed.
Reg. 48,756, 48,768 (Aug. 14, 2012). The Board has not yet decided the merits of
Case IPR2013-00189
Patent 7,785,334 B1

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the instant proceeding. Furthermore, no dispute remains between Atrium and
Davol involving the ’334 Patent, or foreign counterparts of the ’334 Patent.
Therefore, the Board determines that in the circumstances of this case, it is
appropriate to terminate the trial without rendering a final written decision. See 35
U.S.C. § 317(a); 37 C.F.R. § 42.72.
On April 3, 2014, the parties also filed a joint motion (Paper No. 61) to:
(1) withdraw pending Motions to Seal; and (2) expunge certain documents from
the record. The parties specifically request withdrawal of Davol’s Motions to Seal
filed as Paper Nos.: 30 and 51, as well as Atrium’s Motions to Seal filed as Paper
Nos.: 40 and 57. Paper No. 61 at 1. The parties further request that unredacted
versions of confidential documents be expunged from the record. These
unredacted documents are the subject of the Motions to Seal that the parties now
seek to withdraw. Specifically, the parties move to expunge the following
documents:
 Paper 32, Patent Owner’s Response (unredacted version);
 Paper 39, Petitioner’s Reply (unredacted version);
 Paper 49, Patent Owner’s Motion for Observations on the Cross
Examination of Mr. Theodore Karwoski (unredacted version);
 Paper 55, Petitioner’s Response to Patent Owner’s Motion for
Observations on Cross Examination of Mr. Theodore Karwoski
(unredacted version);
 Exhibit 1333, Transcript of Deposition of Michael Lee (unredacted
version);
 Exhibit 2308, Declaration of Michael Lee (unredacted version);
 Exhibit 2312, Ventralex Sales Revenue (unredacted version); and
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 Exhibit 2337, Transcript of Deposition of Theodore Karwoski
(unredacted version).
In the joint motion, the parties state that the documents to be expunged were
submitted after institution of trial and had not been considered by the Board in
instituting trial. Furthermore, redacted versions of these confidential documents
remain a part of the record; the parties do not seek to expunge such redacted
documents.
Based on the facts in this case and the termination of the proceedings, we
hereby grant the parties’ joint motion to withdrawn their Motions to Seal and to
expunge specific exhibits from the record.
It is, therefore,
ORDERED that the joint motion to terminate the inter partes review
captioned IPR2013-00189 is GRANTED and the proceeding is hereby terminated;
FURTHER ORDERED that the parties’ joint request that the settlement
agreement (Ex. 2338) be treated as business confidential information, kept separate
from the file of the involved patent, and made available only to Federal
Government agencies on written request, or to any person on a showing of good
cause, under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is
GRANTED;
FURTHER ORDERED that the parties’ joint motion to withdraw Davol’s
Motions to Seal filed as Paper Nos.: 30 and 51, and Atrium’s Motions to Seal filed
as Paper Nos.: 40 and 57 is GRANTED; and
FURTHER ORDERED that the parties’ joint motion to expunge Paper 32
(unredacted version), Paper 39 (unredacted version), Paper 49 (unredacted
version), Paper 55 (unredacted version), Exhibit 1333(unredacted version), Exhibit
2308 (unredacted version), Exhibit 2312 (unredacted version), and Exhibit 2337
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Patent 7,785,334 B1

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(unredacted version) is GRANTED; and upon entry of this decision, those exhibits
will be expunged from the record of the instant proceedings.

For PETITIONER:

David Cavanaugh
David.cavanaugh@wilmerhale.com

Larissa Park
Larissa.park@wilmerhale.com

For PATENT OWNER:

Jason Honeyman
Jhoneyman-ptab@wolfgreenfield.com

James Hanifin
Jhanifin-ptab@wolfgreenfield.com