Complete Nutrition Holdings, Inc.v.Vireo Systems, Inc.

Patent Trial and Appeal Board

May 1, 2015

12909377 (P.T.A.B. May. 1, 2015)

Trials@uspto.gov
571-272-7822
Paper 25
May 1, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

COMPLETE NUTRITION HOLDINGS, INC.,
Petitioner,

v.

VIREO SYSTEMS, INC.
and
BOARD OF REGENTS OF THE
UNIVERSITY OF NEBRASKA,
Patent Owner.
____________

Case IPR2014-00451
Patent 8,354,450 B2
____________

Before LINDA M. GAUDETTE, JACQUELINE WRIGHT BONILLA, and
ZHENYU YANG, Administrative Patent Judges.

BONILLA, Administrative Patent Judge.

DECISION
Termination of the Proceeding
35 U.S.C. § 317(a) and 37 C.F.R. § 42.72
IPR2014-00451
Patent 8,354,450 B2

2

On April 16, 2015, the parties filed a joint motion to terminate this
proceeding (Paper 23), along with a true copy of their written settlement agreement
(Ex. 1010). The parties indicated in their joint motion that termination of this
proceeding is appropriate because they settled their dispute involving U.S. Patent
No. 8,354,450 B2 (“the ’450 patent”). Paper 23, 2. The parties also indicated that
they have resolved the related district court case involving the ’450 patent,
Complete Nutrition Holdings, Inc. v. Vireo Systems, Inc. and Board of Regents of
the University of Nebraska, Case Number 3:14-cv-00558 (M.D. Tenn.). Id. On
the same day, the parties also filed another joint motion requesting that the
settlement agreement be treated as business confidential information and kept
separate from the file of the ’450 patent. Paper 24, 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 the patent owner, unless the Office has decided the merits of the
proceeding before the request for termination is filed.” We instituted a trial in this
proceeding as to claim 19 of the ’450 patent (Paper 10) on September 2, 2014, but
we have not decided yet the merits of this proceeding.
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 the termination of the trial.” As the parties have filed a true copy
of their written settlement agreement, which encompasses both this proceeding and
the related district court case, we determine that it is appropriate to terminate this
proceeding without rendering a final written decision as to the patentability of
claim 19 the ’450 patent. See 37 C.F.R. §§ 42.72, 42.74.
IPR2014-00451
Patent 8,354,450 B2

3

As requested by the parties, the settlement agreement will be treated as
business confidential information and kept separate from the file of the ’450 patent.
37 C.F.R. § 42.74(c).

Accordingly, it is
ORDERED that the parties’ joint request that the settlement agreement be
treated as business confidential information is GRANTED; and
FURTHER ORDERED that the joint motion to terminate the proceeding is
GRANTED; and
FURTHER ORDERED that the proceeding is TERMINATED.

PETITIONER:

Scott A.M. Chambers
B. Dell Chism
PORZIO, BROMBERG & NEWMAN P.C.
sachambers@pbnlaw.com
bdchism@pbnlaw.com

PATENT OWNER:

Stephanie D. Scruggs
Siddhesh V. Pandit
SMITH, GAMBRELL & RUSSELL, LLP
sscruggs@sgrlaw.com
spandit@sgrlaw.com