CLIO USA, INC.,v.The Procter & Gamble Company

Patent Trial and Appeal Board

Oct 31, 2014

11099738 (P.T.A.B. Oct. 31, 2014)

Trials@uspto.gov Paper No. 60
Tel: 571-272-7822 Filed: October 31, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
CLIO USA, INC.,
Petitioner,

v.

THE PROCTER AND GAMBLE COMPANY,
Patent Owner.
_______________

Case IPR2013-00450
Patent 7,122,199
_______________

Before LINDA M. GAUDETTE, JAMES P. CALVE, and
SCOTT E. KAMHOLZ, Administrative Patent Judges.

KAMHOLZ, Administrative Patent Judge.

JUDGMENT
Termination of the Proceeding
37 C.F.R. § 42.72

IPR2013-00450
Patent 7,122,199

2

The parties filed a joint motion to terminate the instant proceeding
(Paper 57 (“Mot.”)), and a true copy of their written settlement agreement
(Ex. 2037) made in connection with the termination, in accordance with
35 U.S.C. § 317 and 37 C.F.R. § 42.74(b). The parties also jointly requested
that their settlement agreement be treated as business confidential
information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 58.
For the reasons provided below, the joint motion to terminate is
granted. The joint request that the settlement agreement be treated as
business confidential information is also granted.
While the parties may agree to settle their issues related to the
involved patent, the Board is not a party to the settlement and may determine
independently any question of patentability. 37 C.F.R. § 42.74(a).
The Board has not yet decided the merits of this proceeding. The
parties represent that the ’199 patent is the subject of a district court action,
Procter & Gamble Co. v. Team Techs., Inc., No. 1:12-cv-00552-TSB (S.D.
Ohio), in which a consent judgment has been requested. Mot. 2. The parties
further represent that these matters are covered by the settlement agreement.
Id.
The parties also note that another petition for inter partes review of
the ’199 patent is pending currently before the Office. See CAO Group, Inc.
v. Procter & Gamble Co., IPR2014-00798. An institution decision has not
yet been issued in that case.
In view of the parties’ settlement agreement made in connection with
the termination in accordance with 35 U.S.C. § 317(b) and 37 C.F.R.
§ 42.74(b), we determine that it is appropriate to terminate the involvement
IPR2013-00450
Patent 7,122,199

3

of Petitioner. Moreover, we determine that it also is appropriate to terminate
the proceeding with respect to Patent Owner, because we have not yet
decided the merits of this proceeding. As a result, it is appropriate to enter
judgment in the form of termination. See 37 C.F.R. § 42.2.
Accordingly, it is
ORDERED that the joint motion to terminate IPR2013-00450 is
granted, and this proceeding is hereby terminated as to all parties, including
Petitioner Clio USA, Inc. and Patent Owner The Procter & Gamble
Company; and
FURTHER ORDERED that the joint request that the settlement
agreement be treated as business confidential information and be kept
separate from the patent files under 35 U.S.C. § 317(b) and 37 C.F.R.
§ 42.74(c) is granted.

IPR2013-00450
Patent 7,122,199

4

FOR PETITIONER:

William H. Oldach III
Susanne M. Hopkins
Ari G. Zytcer
VORYS, SATER, SEYMOUR AND PEASE LLP

FOR PATENT OWNER:

David M. Maiorana
John V. Biernacki
Kenneth S. Luchesi
JONES DAY

David M. Weirich
THE PROCTER & GAMBLE COMPANY