HIP, Inc.

Patent Trials and Appeals Board

May 12, 2020

IPR2019-00469 (P.T.A.B. May. 12, 2020)

Trials@uspto.gov Paper 60
571-272-7822 Date: May 12, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
HORMEL FOODS CORPORATION,
Petitioner,
v.
HIP, INC.,
Patent Owner.

IPR2019-00469
Patent 9,510,610 B2

Before DONNA M. PRAISS, CHRISTOPHER L. CRUMBLEY, and
WESLEY B. DERRICK, Administrative Patent Judges.

CRUMBLEY, Administrative Patent Judge.

TERMINATION
Settlement After Institution of Trial
35 U.S.C. § 317; 37 C.F.R. § 42.74

On April 28, 2020, pursuant to Board authorization, Petitioner Hormel
Foods Corporation and Patent Owner HIP, Inc., filed a Joint Motion to
Terminate this inter partes review. Paper 59. With the Joint Motion, the
parties filed a copy of a Joint Stipulation to Terminate, in which the parties
agreed that this inter partes review trial is now moot in light of the Federal
IPR2019-00469
Patent 9,510,610 B2

2

Circuit’s affirmance of the District Court for the District of Delaware’s
determination that the claims at issue are invalid, and HIP’s agreement that it
will not seek further appellate review. Ex. 1046. The parties move to
terminate the inter partes review. Paper 59, 2.
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.” In this
proceeding, the Board has not yet reached a decision on the merits with
respect to the patentability of any involved claim. Accordingly, we are
required by statute to terminate the proceeding with respect to Hormel.
Furthermore, “[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).” Id. No petitioner remains following the termination of
Hormel’s involvement. The Board, therefore, has discretion to terminate
this review with respect to HIP. In their Joint Motion, the parties note that
the District Court’s determination that the claims at issue are invalid is now
final, and no dispute remains between the parties in any form. Paper 59, 2.
In these circumstances, we determine that it is appropriate to
terminate this inter partes review without rendering a final written decision.
See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72.

IPR2019-00469
Patent 9,510,610 B2

3

In light of the foregoing, it is
ORDERED that the Joint Motion to Terminate this proceeding
(Paper 59) is granted; and
FURTHER ORDERED that this inter partes review is hereby
terminated.

For PETITIONER:
Kurt Niederluecke
Barbara Marchevsky
FREDRIKSON & BYRON, P.A.
kniederluecke@fredlaw.com
bmarchevsky@fredlaw.com

For PATENT OWNER:
Jerry Selinger
Barden Patterson
PATTERSON and SHERIDAN, LLP
jselinger@pattersonsheridan.com
tpatterson@pattersonsheridan.com