Blue Yonder Group, Inc.

Patent Trials and Appeals Board

Feb 9, 2022

IPR2021-01246 (P.T.A.B. Feb. 9, 2022)

Trials@uspto.gov Paper: 17 571-272-7822 Date: February 9, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD KINAXIS INC. and KINAXIS CORP., Petitioner, v. BLUE YONDER GROUP, INC., Patent Owner. IPR2021-01246 Patent 6,591,153 B2 Before NATHAN A. ENGELS, PAUL J. KORNICZKY, and BRENT M. DOUGAL, Administrative Patent Judges. DOUGAL, Administrative Patent Judge. DECISION Dismissal Prior to Institution of Trial 37 C.F.R. § 42.71(a) IPR2021-01246 Patent 6,591,153 B2 2 The parties filed a Joint Motion to Terminate Petition for Inter Partes Review. Paper 15 (“Mot.”). The parties also filed a copy of their Joint Stipulation of Dismissal from the related district court case (Blue Yonder Group Inc. v. Kinaxis Inc., No. 3:20-cv-03636-K (N.D. Tex.)). Ex. 1013. In the Joint Motion, the parties cite 37 C.F.R. § 42.71(a) and move to terminate the Petition (Paper 2), stating that the parties have “dismissed their dispute in the district court . . . with respect to US Patent No. 6,591,153,” as indicated by the Joint Stipulation of Dismissal. Mot., 1 (citing Ex. 1013). The parties have shown good cause for dismissal of the Petition under 37. C.F.R. § 42.71(a). The parties have dismissed their dispute regarding the challenged patent in the district court, a decision on whether to grant the Petition has not yet been issued, and the Board has not issued any other substantive decisions. Dismissing the Petition at this stage promotes the Board’s objective of achieving “just, speedy, and inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1(b). It also facilitates settlement. See PTAB Consolidated Trial Practice Guide 86 (Nov. 2019) 5 (“There are strong public policy reasons to favor settlement.”). Under these circumstances, we determine that it is appropriate to dismiss the Petition and terminate this proceeding. It is ORDERED that the parties’ Joint Motion to Terminate the Petition for Inter Partes Review is granted, the Petition is dismissed, and this proceeding is hereby terminated. IPR2021-01246 Patent 6,591,153 B2 3 For PETITIONER: Joshua Griswold Ricardo Bonilla Kenneth Darby Patrick Bisenius FISH &RICHARDSON P.C. griswold@fr.com rbonilla@fr.com kdarby@fr.com pbisenius@fr.com For PATENT OWNER: Steven Laureanti Kevin Tuttle SPENCER FANE LLP slaureanti@spencerfane.com ktuttle@spencerfane.com