Fresh Products, LLCv.Ed Ramirez

Patent Trial and Appeal Board

Aug 17, 2015

11438945 (P.T.A.B. Aug. 17, 2015)

Trials@uspto.gov Paper 11
Tel: 571-272-7822 Entered: August 17, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

FRESH PRODUCTS, LLC,
Petitioner,
v.
ED RAMIREZ,
Patent Owner.

Case IPR2015-00475
Patent 8,856,977 B2

Before PHILLIP J. KAUFFMAN, HYUN J. JUNG, and BARRY L.
GROSSMAN, Administrative Patent Judges.
GROSSMAN, Administrative Patent Judge.

ORDER
Termination of the Proceeding
37 U.S.C. § 317 and 37 C.F.R. § 42.72

IPR2015-00475
Patent 8,856,977 B2

2
Pursuant to authorization by the Board, Fresh Products, LLC
(“Petitioner”) and Ed Ramirez (“Patent Owner”) filed a Joint Motion to
Terminate, jointly requesting termination of this inter partes review
proceeding (Paper 9 (“Joint Motion”)) and a Joint Request to Keep Separate
requesting that we treat as confidential the submitted settlement agreement
(Paper 10 (“Joint Request”)).
Under 35 U.S.C. § 317(a), an inter partes review proceeding shall be
terminated with respect to any petitioner upon the joint request of the
petitioner and the patent owner, unless the Patent and Trademark Office has
decided the merits of the proceeding before the request for termination is
filed. This matter is in its preliminary stage. A Decision to Institute was
entered on June 22, 2015 (Paper 7). A Patent Owner Response is not due
until September 22, 2015, and has not yet been filed. Thus, the merits have
not been decided and this proceeding is eligible for termination.
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).” Petitioner is the sole petitioner in
this review. The Board has discretion to terminate this review with respect
to Patent Owner.
Under 35 U.S.C. § 317(b), any agreement or understanding between
the Patent Owner and a Petitioner, including any collateral agreements
referred to in such agreement or understanding, made in connection with, or
in contemplation of, the termination of the proceeding shall be in writing,
and a true copy of such agreement or understanding shall be filed in the
Office. Patent Owner and Petitioner state in the Joint Motion that the parties
have agreed to settle their dispute and have reached a written agreement to
IPR2015-00475
Patent 8,856,977 B2

3
terminate this proceeding. Joint Motion 1. In support of the Joint Motion,
the parties submitted Exhibit 1020 as evidence of their agreement. The
parties also represent that Exhibit 1020 is filed in accordance with 35 U.S.C.
§ 317(b) and 37 C.F.R. § 42.74(b), and thus represent that there are no
collateral agreements or understandings in connection with, or in
contemplation of, the termination of this proceeding. Id.
Upon consideration of the facts in the case before us, we grant the
Joint Motion and terminate this proceeding as to both Petitioner and Patent
Owner without rendering a final written decision. 37 C.F.R. § 42.72. We
also grant the Joint Request to maintain Exhibit 1020 as business
confidential in accordance with 37 C.F.R. § 42.74(c).
ORDER
Accordingly, it is:
ORDERED that the Joint Motion to Terminate this proceeding is
granted and, accordingly, this proceeding is hereby terminated; and
FURTHER ORDERED that the parties’ Joint Request that the
agreement (Ex. 1020) submitted in support of the Joint Motion be treated as
business confidential information, to be kept separate from the file of U.S.
Patent No. 8,856,977 B2, and made available only under the provisions of
35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is granted.

IPR2015-00475
Patent 8,856,977 B2

4
PETITIONER:

Edward Schlatter
Kent Shum
Joseph Jennings
KNOBBE, MARTENS, OLSON, & BEAR, LLP
2eas@knobbe.com
2kns@knobbe.com
2JFJ@knobbe.com

PATENT OWNER:

Matthew Cutler
Bryan Wheelock
Douglas Robinson
HARNESS, DICKEY & PIERCE, PLC
mcutler@hdp.com
bwheelock@hdp.com
drobinson@hdp.com