Biotronik, Inc.v.My Health, Inc.

Patent Trial and Appeal Board

Jun 24, 2015

09793191 (P.T.A.B. Jun. 24, 2015)

Trials@uspto.gov Paper 15
571-272-7822 Entered: June 24, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

BIOTRONIK, INC., LIFESCAN, INC., and SOTERA WIRELESS, INC.,
Petitioner,

v.

MY HEALTH, INC.,
Patent Owner.
____________

Case IPR2015-00102
Patent 6,612,985 B2
____________

Before BRIAN J. McNAMARA, JAMES A. TARTAL, and
SUSAN L. C. MITCHELL Administrative Patent Judges.

TARTAL, Administrative Patent Judge.

DECISION
Joint Motion to Terminate Inter Partes Review
with Respect to Lifescan, Inc.
35 U.S.C. § 317 and 37 C.F.R. § 42.72

IPR2015-00102
Patent 6,612,985 B2

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I. DISCUSSION
On June 22, 2015, My Health, Inc., (“Patent Owner”) and Lifescan,
Inc. (“Lifescan”), (collectively, “the parties”), filed a Joint Motion to
Terminate this inter partes review proceeding with respect to Lifescan
(Paper 14), including a joint request to have their settlement agreement
treated as business confidential information under 35 U.S.C. § 317(b) and 37
C.F.R. § 42.74(c). The parties also filed a true copy of their written
settlement agreement. Ex. 1012. The parties indicated in their Joint Motion
to Terminate that termination of this proceeding is appropriate because they
have reached an agreement regarding their dispute with respect to U.S.
Patent No. 6,612,985 B2 (“the ’985 patent”). See Paper 14, 2.
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.” This
proceeding is in its early stages. Although we instituted an inter partes
review of claims 1–9 of the ’985 patent on April 16, 2015 (Paper 11), Patent
Owner has not filed a Patent Owner Response.
Further, under 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.” As
the parties have filed their written settlement agreement, we determine that it
is appropriate to terminate this proceeding as to Lifescan.
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Patent 6,612,985 B2

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II. ORDER
Accordingly, it is:
ORDERED that the parties’ Joint Request to File Agreement as
Business Confidential Information Pursuant to 35 U.S.C. § 317(b) and 37
C.F.R. § 42.74(c) is GRANTED; and
ORDERED that the parties’ Joint Motion to Terminate Inter Partes
Review with Respect to Lifescan, Inc., is GRANTED.

IPR2015-00102
Patent 6,612,985 B2

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PETITIONER:
Jeffrey M. Olson
Sidley Austin LLP
jolson@sidley.com

Andrew D. Cohen
Patterson Belknap Webb & Tyler LLP
acohen@pbwt.com

Matthew S. Jorgenson
Sidley Austin LLP
mjorgenson@sidley.com

Orion Armon
Cooley LLP
oarmon@cooley.com

PATENT OWNER:

Brett I. Johnson
PIA Anderson Dorius Reynard & Moss
bjohnson@padrm.com