Attractive Surgical, LLC

Patent Trials and Appeals Board

Oct 22, 2020

IPR2019-01295 (P.T.A.B. Oct. 22, 2020)

Trials@uspto.gov Paper 28
Tel: 571-272-7822 Entered: October 22, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

LEVITA MAGNETICS INTERNATIONAL CORP.,
Petitioner,

v.

ATTRACTIVE SURGICAL, LLC,
Patent Owner.
____________

IPR2019-01294 (9,386,973 B2)
IPR2019-01295 (8,602,981 B2)
____________

Before GRACE KARAFFA OBERMANN, SHERIDAN K. SNEDDEN,
and AVELYN M. ROSS, Administrative Patent Judges.

ROSS, Administrative Patent Judge.

TERMINATION
Due to Settlement After Institution of Trial
Granting Request to Treat Settlement Agreement as
Business Confidential Information
35 U.S.C. § 317; 37 C.F.R. §§ 42.72, 42.74(c)

IPR2019-01294 (9,386,973 B2)
IPR2019-01295 (8,602,981 B2)

2

On October 20, 2020, with our prior authorization, Levita Magnetics
International Corp. (“Petitioner”) and Attractive Surgical, LLC (“Patent
Owner”) (collectively, “the Parties”) filed a Joint Motion to Terminate the
inter partes review in both in IPR2019-001294 and IPR2019-001295.
Paper 27 (“Motion”).1 Together with the Motion, the parties filed a copy of
their written Settlement, Release, and Assignment Agreement (Ex. 1027,
“Settlement Agreement”), and a Joint Request to File Settlement Agreement
as Business Confidential Information Pursuant to 35 U.S.C. § 317(b) and
37 C.F.R. § 42.74(c). Paper 28 (“Joint Request”).
The Board generally expects that a case “will terminate after the filing
of a settlement agreement, unless the Board has already decided the merits.”
Consolidated Trial Practice Guide, 86 (Nov. 2019) (“Consolidated TPG”)2;
see 35 U.S.C. §317(a) and 37 C.F.R. § 42.72. Petitioner filed two petitions
for inter partes review, i.e., IPR2019-001294 and IPR2019-001295,
challenging U.S. Patent Nos. 9,386,973 and 8,602,981 respectively
(collectively “the challenged patents”). On January 21, 2020, we instituted
inter partes review of both cases. The oral hearing is scheduled for
November 17, 2020.
The Parties explain that “[t]ermination of this proceeding is proper
because briefing is not yet complete and oral argument has not taken place,
thus the Board has not yet ‘decided the merits of the proceeding before the

1 Citations in this Order are to papers filed in IPR2019-001294. Similar
papers were filed IPR2019-001295. See, e.g., IPR2019-001295, Paper 26
(Motion to Terminate), Paper 27 (Joint Request to File Settlement
Agreement as Business Confidential Information), Ex. 1027 (Settlement
Agreement).
2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
IPR2019-01294 (9,386,973 B2)
IPR2019-01295 (8,602,981 B2)

3

request for termination is filed.’” Motion 1 (citing 35 U.S.C. § 317(a);
Consolidated TPG at 86). The parties indicate that the agreement reached
resolves all disputes regarding the challenged patents, including the inter
partes review in IPR2019-001294 and IPR2019-001295 as well as the
related district court litigations in both Ohio and California, which have been
dismissed with prejudice. Id. at 2; Ex. 1027, 4.
Under these circumstances, we determine that it is appropriate to enter
judgment and terminate this proceeding without rendering a final written
decision. See 35 U.S.C. § 317(a); 37 C.F.R. §§ 42.5(a), 42.72. After
reviewing the Agreement, we further find that it contains confidential
business information regarding the terms of the settlement and that good
cause exists to treat the Agreement as business confidential information to
be kept separate from the patent file. See 35 U.S.C. § 317(b); 37 C.F.R.
§ 42.74(c). This Paper does not constitute a Final Written Decision under
35 U.S.C. § 318(a).

ORDER
In view of the foregoing, it is
ORDERED that the Joint Request to File Settlement as Business
Confidential Information (Paper 28) is granted; and
FURTHER ORDERED that the Settlement Agreement (Ex. 1027)
shall be treated as business confidential information and shall be kept
separate from the patent file; and
FURTHER ORDERED that the parties’ Joint Motion to Terminate the
inter partes review (Paper 27) is granted and this proceeding is hereby
terminated.
IPR2019-01294 (9,386,973 B2)
IPR2019-01295 (8,602,981 B2)

4

For PETITIONER:
Michael T. Rosato (Reg. No. 52,182)
Matthew A. Argenti (Reg. No. 61,836)
Tasha M. Thomas (Reg. No. 73,207)
WILSON SONSINI GOODRICH & ROSATI
mrosato@wsgr.com
margenti@wsgr.com
tthomas@wsgr.com

For PATENT OWNER:
David A. Giordano (Reg. No. 64,480)
David A Chavous (Reg. No. 66,047)
davidg@giordanolawllc.com
dchavous@chavousiplaw.com