CB Distributors, Inc. and DR Distributors, LLCv.Fontem Holdings 1 B.V.

Patent Trial and Appeal Board

Dec 7, 2015

13426817 (P.T.A.B. Dec. 7, 2015)

Trials@uspto.gov
571-272-7822
Paper No. 41
Date Entered: December 7, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

CB DISTRIBUTORS, INC. and DR DISTRIBUTORS, LLC,
Petitioner,

v.

FONTEM HOLDINGS 1 B.V.,
Patent Owner.
____________

Cases IPR2014-015291
Patent 8,689,805 B2
____________

Before JOSIAH C. COCKS, RAMA G. ELLURU, and
JO-ANNE M. KOKOSKI, Administrative Patent Judges.

COCKS, Administrative Patent Judge.
DECISION
Joint Motion to Terminate the Inter Partes Review
35 U.S.C. § 317 and 37 C.F.R. § 42.72

1 Case IPR2015-01027 has been joined with this proceeding.
IPR2014-01529
Patent 8,689,805 B2

I. Introduction
On November 18, 2015, Petitioner entities CB Distributors, Inc. and
DR Distributors, LLC (“CB/DR”), and Patent Owner Fontem Holdings 1
B.V. (“Fontem”) (collectively referred to as “the parties”), filed a Joint
Motion to Terminate this inter partes review proceeding. Paper 37 (“Joint
Motion to Terminate”).2 Along with the Joint Motion to Terminate, the
parties filed a true copy of their written settlement agreement and license
agreement (Ex. 2017), as well as 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) (Paper 38). The parties contend that
“[t]he settlement agreement and license agreement have resolved all disputes
involving the patent-at-issue between the Patent Owner and Petitioner
CB/DR.” Joint Motion to Terminate 4.
II. Discussion
The parties are reminded that the Board is not a party to the
settlement, and may identify independently any question of patentability. 37
C.F.R. § 42.74(a). Generally, however, 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).
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.” The

2 Filing of the Joint Motion to Terminate was authorized in e-mail
correspondence from Board personnel on November 30, 2015.
IPR2014-01529
Patent 8,689,805 B2

2

requirement for terminating review with respect to CB/DR is met.
Furthermore, 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).” CB/DR is the sole petitioner
remaining in this review. The Board has discretion to terminate this review
with respect to Fontem. The panel entered a Decision to institute trial on
March 12, 2015 (Paper 6). Fontem filed a Patent Owner Response on July
13, 2015 (Paper 22). In the Joint Motion to Terminate, the parties represent
the following:
Here, IPR2014-01529 should be terminated with respect
to Petitioner CB/DR because the Board has not decided the
merits of IPR2014-01529 and Patent Owner and Petitioner
CB/DR jointly request termination.
IPR2014-01529 should also be terminated in its entirety
because of the strong public policy and expectation that IPRs
will terminate upon settlement prior to a decision on the merits.
Specifically, no petitioner will remain in IPR2014-01529 upon
Petitioner CB/DR’s termination . . . Patent Owner and
Petitioner CB/DR have resolved IPR2014-01529 and related
litigation through settlement. Petitioner CB/DR has not yet
filed a reply, and the Board has not heard oral argument or
issued a decision. As such, termination would save significant
further expenditures of resources by the Board and Patent
Owner and Petitioner CB/DR.
Joint Motion to Terminate 2–3.
Upon consideration of the circumstances of this case, the panel has
determined to terminate this inter partes review as to both CB/DR and
Fontem without rendering a final written decision.

IPR2014-01529
Patent 8,689,805 B2

3

III. Order
It is
ORDERED that the Joint Motion to Terminate this proceeding in
IPR2014-01529 (Paper 37) is granted, and this proceeding is hereby
terminated; and
FURTHER ORDERED that, as was requested timely by the parties
(Paper 38), the settlement agreement and license agreement (Exhibit 2017)
will be treated as business confidential information under 35 U.S.C. § 317(b)
and 37 C.F.R. § 42.74(c).

IPR2014-01529
Patent 8,689,805 B2

4

For PETITIONER:

David L. Fehrman
Mehran Arjomand
Alex S. Yap
MORRISON & FOERSTER LLP
dfehrman@mofo.com
marjomand@mofo.com
ayap@mofo.com

Charles D. Larsen
J. Steven Baughman
Megan F. Raymond
Benjamin H. Huh
ROPES & GRAY LLP
charles.larsen@ropesgray.com
steven.baughman@ropesgray.com
megan.raymond@ropesgray.com
benjamin.huh@ropesgray.com

For PATENT OWNER:
Michael Wise
Joseph P. Hamilton
PERKINS COIE LLP
mwise@perkinscoie.com
jhamilton@perkinscoie.com