Iconex LLCDownload PDFPatent Trials and Appeals BoardJun 3, 2020IPR2019-01542 (P.T.A.B. Jun. 3, 2020) Copy Citation Trials@uspto.gov Paper 16 571-272-7822 Date: June 3, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ MAXSTICK PRODUCTS LTD., Petitioner, v. ICONEX, LLC, Patent Owner. ____________ IPR2019-01542 Patent 8,537,184 B2 ____________ Before JONI Y. CHANG, STACY B. MARGOLIES, and SCOTT RAEVSKY, Administrative Patent Judges. CHANG, Administrative Patent Judge. TERMINATION Due to Settlement After Institution of Trial 35 U.S.C. § 317; 37 C.F.R. § 42.74 IPR2019-01542 Patent 8,537,184 B2 2 Petitioner and Patent Owner jointly move to terminate the instant inter partes review in light of their settlement that resolves their dispute regarding U.S. Patent No. 8,537,184 B2 (“the ’184 patent”). Paper 15 (“Mot.”). The parties also filed a true copy of their written settlement agreement in connection with the termination as required by 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b). Ex. 1036. Pursuant to 37 C.F.R. § 42.74(c), the parties additionally filed a joint request to treat the Settlement Agreement as business confidential information kept separate from the file of the involved patent. Paper 14. Generally, the Board expects that a proceeding will terminate after the filing of a settlement agreement. See Consolidated Trial Practice Guide1 at 86; see also 84 Fed. Reg. 64,280 (Nov. 21, 2019). Here, the parties indicate that their Settlement Agreement completely resolves the controversy between the parties relating to the involved patent. Mot. 1. Although the instant inter partes review has been instituted on March 9, 2020, the proceeding is still in the briefing stage. We have not yet held an oral hearing and have not entered a final written decision in this proceeding. Upon review of the procedural posture of this proceeding and the facts before us, we determine that the parties’ requests have merit and that it is appropriate to terminate this proceeding and enter judgment without rendering a final written decision. See 35 U.S.C. § 317(a); 37 C.F.R. §§ 42.2, 42.72. 1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. IPR2019-01542 Patent 8,537,184 B2 3 In consideration of the foregoing, it is hereby ORDERED that the Joint Motion to Terminate is granted; and FURTHER ORDERED that the Joint Request to File Settlement Agreement as Business Confidential Information and to keep such settlement agreement separate from the patent file, and to make it available only to Federal Government agencies on written request, or to any person on a showing of good cause, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is granted. For PETITIONER: James Muldoon Laura Smalley HARRIS BEACH PLLC jmuldoon@harrisbeach.com lsmalley@harrisbeach.com For PATENT OWNER: Matias Ferrario Andrew Rinehart Courtney Dabbiere KILPATRICK TOWNSEND & STOCKTON LLP mferrario@kilpatricktownsend.com arinehart@kilpatricktownsend.com cdabbiere@kilpatricktownsend.com Copy with citationCopy as parenthetical citation