Brookwood Companies Incorporatedv.Nextec Applications, Inc.

Patent Trial and Appeal Board

Dec 9, 2014

07319778 (P.T.A.B. Dec. 9, 2014)

Trials@uspto.gov Paper 27
571-272-7822 Date: December 9, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

BROOKWOOD COMPANIES INCORPORATED,
Petitioner,

v.

NEXTEC APPLICATIONS, INC.,
Patent Owner.
_______________

IPR2014-00412
Patent 5,004,643
____________

Before LINDA M. GAUDETTE, JACQUELINE WRIGHT BONILLA, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.

JUDGMENT
Termination of the Proceeding
35 U.S.C. § 317(a); 37 C.F.R. § 42.72

On December 3, 2014, pursuant to 35 U.S.C. § 317(a), the parties filed a
Joint Motion to terminate this proceeding. Paper 26. Accompanying the Motion,
the parties filed a true copy of a settlement agreement along with a Joint Request to
treat the settlement agreement as business confidential, to be kept separate from the
IPR2014-00412
Patent 5,004,643

2

patent file under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Ex. 2005; Paper 25.
We authorized the filing of these papers in a Board email dated November 15,
2014.
We entered a Decision to Institute an inter partes review in this case on
August 7, 2014, and conducted an initial conference call on September 8, 2014.
Papers 13, 19. Beyond the filing by Patent Owner of a Response to the Petition on
October 31, 2014, (Paper 24), little additional significant activity has occurred in
this proceeding. The parties explain that (i) the briefing and discovery process has
not yet been completed, (ii) Petitioner has not filed a Reply, and (iii) there are no
motions pending. Paper 26, 1. At this juncture of the proceeding, the Board does
not have before it full briefing on the trial issues and the Board has not entered a
final decision.
The Joint Motion to terminate this proceeding indicates that there is no
litigation pending between the parties involving the challenged patent, U.S. Patent
No. 5,004,643 (“the ’643 patent”), as all district court proceedings involving the
’643 patent have been closed. Id. at 2. The parties indicate that reexamination of
the ’643 patent (Reexamination Control No. 90/012,968) remains pending, with
Patent Owner having filed a Reply Brief on November 12, 2014. Based on the
facts of the case, it is appropriate to enter judgment
1
and terminate the proceedings
without rendering a final written decision. See 35 U.S.C. § 317(a); 37 C.F.R.
§ 42.72. Thus, the joint motion to terminate the proceeding is granted.

1
A judgment means a final written decision by the Board, or a termination of a
proceeding. 37 C.F.R. § 42.2.

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Accordingly, it is
ORDERED that the parties’ joint request that the settlement agreement be
treated as business confidential information, to be kept separate from the patent
file, and made available only to Federal Government agencies on written request,
or to any person on a showing of good cause, pursuant to 35 U.S.C. § 317(b) and
37 C.F.R. § 42.74(c) is granted;
FURTHER ORDERED that the joint motion to terminate the proceeding is
granted; and
FURTHER ORDERED that the proceeding is terminated.

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Patent 5,004,643

4

PETITIONER:
Jonathan D. Ball, Ph.D.
Heath Briggs
GREENBERG TRAURIG, LLP
ballj@gtlaw.com
BriggsH@gtlaw.com
njdocket@gtlaw.com
PATENT OWNER:
Nagendra Setty
George L. Kanabe
Don Daybell
Anthony Kuhlmann
ORRICK, HERRINGTON & SUTCLIFFE LLP
N13PTABDocket@orrick.com
GXKPTABDocket@orrick.com
D2DPTABDocket@orrick.com
TABDocket@orrick.com