Conmed Corporation and Linvatec Corporation v Bonutti Skeletal Innovations LLC

Patent Trial and Appeal Board

Apr 30, 2014

09872033 (P.T.A.B. Apr. 30, 2014)

Trials@uspto.gov Paper 27
571-272-7822 Entered: April 30, 2014
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

CONMED CORPORATION and LINVATEC CORPORATION,
Petitioner,

v.

BONUTTI SKELETAL INNOVATIONS LLC,
Patent Owner.
____________

Case IPR2013-00624
Patent 6,500,195 B2

Before MICHAEL R. ZECHER, BENJAMIN D. M. WOOD, and
MITCHELL G. WEATHERLY, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

DECISION
Termination of Trial
35 U.S.C. § 317(a) and 37 C.F.R. § 42.72
Case IPR2013-00624
Patent 6,500,195 B2

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On April 18, 2014, the parties filed a joint motion to terminate this
proceeding (Paper 25), as well as a joint request (Paper 26) 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). The parties also filed a true copy
of their written settlement agreement. Ex. 4001. The parties indicated in
their joint motion that termination of this proceeding is appropriate because
they have reached an agreement regarding their dispute with respect to U.S.
Patent No. 6,500,195 B2 (“the ’195 patent”). Paper 25, 2. The parties
indicated that the related district court litigation involving the ’195 patent
was dismissed without prejudice. Id. The parties did not identify any other
related district court litigations involving the ’195 patent. Id.
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.” We
instituted a trial in this proceeding as to claims 8 and 9 of the ’195 patent
(Paper 20) on March 11, 2014, but we have not decided 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 termination of the trial.” See
also 37 C.F.R. §§ 42.72; 42.73(a). As the parties have filed their written
settlement agreement, and the related district court litigation was dismissed
without prejudice, we determine that it is appropriate to terminate this
proceeding without rendering a final written decision as to the patentability
Case IPR2013-00624
Patent 6,500,195 B2

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of claims 8 and 9 of the ’195 patent. See 37 C.F.R. §§ 42.72, 42.73, 42.74.
ORDER
Accordingly, it is hereby:
ORDERED that the joint request of the parties that the settlement
agreement (Ex. 4001) be treated as business confidential information under
35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is GRANTED; and
ORDERED that the joint motion of the parties to terminate this
proceeding is GRANTED, and this proceeding is hereby terminated.
Case IPR2013-00624
Patent 6,500,195 B2

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For PETITIONER:
Matthew J. Moore
Michael B. Eisenberg
Latham & Watkins LLP
matthew.moore@lw.com
michael.eisenberg@lw.com

For PATENT OWNER:
Cary Kappel
William Gehris
Davidson, Davidson, & Kappel, LLC
ckappel@ddkpatent.com
wgehris@ddkpatent.com