Hamilton Storage Technologies, Inc.v.U. of Virginia Patent Foundation

Patent Trial and Appeal Board

May 18, 2015

10429490 (P.T.A.B. May. 18, 2015)

Trials@uspto.gov Paper No. 20
571-272-7822 Entered: May 18, 2015
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

HAMILTON STORAGE TECHNOLOGIES, INC.
and HAMILTON COMPANY
Petitioner

v.

UNIVERSITY OF VIRGINIA PATENT FOUNDATION
Patent Owner
____________

Cases IPR2014-01054, -01058, -01060, -01062
Patents 6,467,285, 6,581,395, 6,688,123, 6,941,7621
____________

Before GLENN J. PERRY, JEREMY M. PLENZLER, and
TIMOTHY J. GOODSON, Administrative Patent Judges.

PERRY, Administrative Patent Judge.

DECISION
Termination of the Proceeding
37 C.F.R. § 42.72

1 The parties are not authorized to use a combined caption and must file
papers separately in these for proceedings.
Cases IPR2014-01054, -01058, -01060, -01062
Patents 6,467,285, 6,581,395, 6,688,123, 6,941,762

DISCUSSION
We instituted trial2 in each of these proceedings in December 30,
2014. On May 15-16, 2015, the parties filed a Joint Motion to terminate
each of these proceedings3, as well as a Joint Request 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)4. The parties also filed a true
copy of their written settlement agreement.5 The parties indicated in their
Joint Motions that termination of these proceedings is appropriate because
they have reached an agreement regarding their dispute with respect to U.S.
Patents No. 6,467,285 (“the ’285 patent”); 6,581,395 (“the ’395 patent”);
6,688,123 (“the ’123 patent”); and 6,941,762 (“the ’762 patent”). Paper 18,
26. The parties indicate that the co-pending district court case involving
these patents was terminated by the U.S. District Court for the Western
District of Virginia on May 12, 2015. 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.” Final
Decisions in these proceedings have not yet been issued.

2 IPR2014-001054, Paper 11; IPR2014-001058, Paper 11; IPR2014-001060,
Paper 11; and IPR2014-001062, Paper 11.
3 IPR2014-001054, Paper 18; IPR2014-001058, Paper 21; IPR2014-001060,
Paper 18; and IPR2014-001062, Paper 18.
4 IPR2014-001054, Paper 19; IPR2014-001058, Paper 22; IPR2014-001060,
Paper 19; and IPR2014-001062, Paper 19.
5 Ex. 1045 in each proceeding.
6 For convenience, we cite only to papers filed in IPR2014-001054. It
appears that the four motions to terminate are substantively identical.
Cases IPR2014-01054, -01058, -01060, -01062
Patents 6,467,285, 6,581,395, 6,688,123, 6,941,762

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.” As the parties have filed
their written settlement agreement, and the co-pending district court cases
have been dismissed, we determine that it is appropriate to terminate this
proceeding without rendering a Final Written Decision as to the patentability
of claims 1, 2, 4, 6, 11–21, 26, 27, and 29 of the ’285 patent; claims 1–3, 5,
7, 12–22, 27, 28, 30, and 31 of the ’395 patent; claims 1–3, 5, 7, 12–22, 26,
30, 31, and 33 of the ’123 patent; and claims 32 and 34 of the ’762 patent.
See 37 C.F.R. §§ 42.72, 42.73, 42.74.

ORDER
Accordingly, it is:
ORDERED that the parties’ Joint Requests that the settlement
agreement be treated as business confidential information under 35 U.S.C.
§ 317(b) and 37 C.F.R. § 42.74(c) are GRANTED; and
ORDERED that the parties’ Joint Motions to terminate these
proceedings are GRANTED, and this proceeding is hereby terminated.

Cases IPR2014-01054, -01058, -01060, -01062
Patents 6,467,285, 6,581,395, 6,688,123, 6,941,762

For PETITIONER:

Edward Williams
Ryann Beck
Andrus Intellectual Property Law, LLP
ewilliams@andruslaw.com
rbeck@andruslaw.com

For PATENT OWNER:

Gregory J. Gonsalves
gonsalves@gonsalveslawfirm.com

Rodney L. Sparks
Robert J. Decker
University of Virginia Patent Foundation
Rodney@uvapf.org