GN RESOUND ASv.Oticon A/SDownload PDFPatent Trial and Appeal BoardJan 12, 201612342241 (P.T.A.B. Jan. 12, 2016) Copy Citation Trials@uspto.gov Paper 24 571-272-7822 Entered: January 12, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ GN RESOUND A/S, Petitioner, v. OTICON A/S, Patent Owner. ____________ Case IPR2015-00104 Patent 8,300,863 B2 Before MICHELLE R. OSINSKI, NEIL T. POWELL, and FRANCES L. IPPOLITO, Administrative Patent Judges. IPPOLITO, Administrative Patent Judge. ORDER Joint Motion to Terminate 35 U.S.C. § 317; 37 C.F.R. §§ 42.72, 42.74 IPR2015-00104 Patent 8,300,863 B2 2 On January 8, 2016, the parties filed a Joint Motion to Terminate Proceeding (Paper 21) along with a true copy of a License Agreement1 (Paper 23) and a Joint Request to File Settlement Agreement as Business Confidential Pursuant to 35 U.S.C. § 317 (Paper 22). The above filings were authorized pursuant to an email sent by the Board on January 7, 2016. Under 35 U.S.C. § 317(a), applicable to inter partes review proceedings, a proceeding 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. This matter is at a stage prior to its final hearing, with no decision on the merits having been made. 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. The Joint Motion to Terminate indicates that the parties request termination of this proceeding pursuant to settlement, and have memorialized the parties’ agreement with respect to termination of this proceeding in the License Agreement. Paper 21, 1; Paper 23. With respect to related matters, the parties have requested dismissal of 1 The parties refer to a “Settlement Agreement” attached as “Exhibit 1” to the Joint Motion to Terminate. However, the License Agreement is filed as Paper 23 and there is no Exhibit 1 in the record. Accordingly, we treat the parties’ reference to the “Settlement Agreement” as citing the License Agreement shown in Paper 23. IPR2015-00104 Patent 8,300,863 B2 3 a related district court proceeding based on the License Agreement. Paper 21, 2. The parties further represent that claims 6–8 and 14 of the ’863 patent are the subject of ex parte reexamination 90/013,592. Id. The parties indicate that claims 6–8 and 14 are not at issue in the instant proceeding, which involves claims 1, 4, 5, 11, 12, 16–20, and 25. Additionally, we note that claims 9, 10, 15, and 21–24 of the ‘863 patent were the subject of IPR2015-00103, which is no longer pending following the grant of adverse judgment. IPR2015-00103, Paper 19. Under these circumstances, we determine that it is appropriate to grant the Joint Motion to Terminate the trial without rendering a final written decision pursuant to 35 U.S.C. § 318(a). See 37 C.F.R. §§ 42.5(a), 42.72. Accordingly, it is ORDERED that the Joint Motion to Terminate Proceeding is granted; FURTHER ORDERED that the License Agreement, Paper 23, be treated as business confidential information, be designated “Board Only,” and be kept separate from the file of the involved patent under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c); and FURTHER ORDERED that the proceeding is terminated. PETITIONER: Scott A. McKeown Greg Gardella OBLON, MCCLELLAND, MAIER, & NEUSTADT LLP cpdocketMcKeown@oblon.com cpdocketGardella@oblon.com IPR2015-00104 Patent 8,300,863 B2 4 PATENT OWNER: D. Richard Anderson George S. Dolina BIRCH, STEWART, KOLASCH & BIRCH, LLP dra@bskb.com gsd@bskb.com Copy with citationCopy as parenthetical citation