Conmed Corporation and Linvatec Corporation v Bonutti Skeletal Innovations LLCDownload PDFPatent Trial and Appeal BoardApr 30, 201408344466 (P.T.A.B. Apr. 30, 2014) Copy Citation Trials@uspto.gov Paper 14 571-272-7822 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 IPR2013-00628 Patent 5,527,343 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 IPR2013-00628 Patent 5,527,343 2 On April 18, 2014, the parties filed a joint motion to terminate this proceeding (Paper 12), as well as a joint request (Paper 13) 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. 5,527,343(“the ’343 patent”). Paper 12, 2. The parties indicated that the related district court litigation involving the ’343 patent was dismissed without prejudice. Id. The parties identified one other related district court litigation involving the ’343 patent that is still pending. Id. at 3. 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 1 and 4-7 of the ’343 patent (Paper 8) on March 28, 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 Case IPR2013-00628 Patent 5,527,343 3 proceeding without rendering a final written decision as to the patentability of claims 1 and 4-7 of the ’343 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 IPR2013-00628 Patent 5,527,343 4 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 Copy with citationCopy as parenthetical citation