Ivera Medical Corporationv.CATHETER CONNECTIONS, INC.

Patent Trial and Appeal Board

Jul 16, 2015

12610033 (P.T.A.B. Jul. 16, 2015)

Trials@uspto.gov Paper 24
Tel: 571-272-7822 Entered: July 16, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

IVERA MEDICAL CORPORATION,
Petitioner,

v.

CATHETER CONNECTIONS, INC.,
Patent Owner.
____________

Case IPR2014-01124
Patent 8,647,326
____________

Before JOSIAH C. COCKS, MEREDITH C. PETRAVICK and JOHN G. NEW,
Administrative Patent Judges.

COCKS, Administrative Patent Judge.

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

IPR2014-01124
Patent 8,647,326

2
On June 18, 2015, Petitioner, Ivera Medical Corporation (“Ivera”),
and Patent Owner, Catheter Connections, Inc. (“Catheter”) (collectively
referred to as “the parties”) filed a “Joint Motion to Terminate Proceeding
Under 35 U.S.C. § 317 and 37 C.F.R. § 42.74” (Paper 22) and a “Joint
Motion to Treat Agreement as Business Confidential Under 35 U.S.C.
§ 317(b) and C.F.R. § 42.74(c)” (Paper 23).1 The parties also filed a copy of
their written settlement agreement.2 The parties state that they “have
reached agreement regarding their dispute relating to [U.S. Patent
8,647,326].” Paper 22, 2.
The parties are reminded that the Board is not a party to the settlement
and may identify independently any question of patentability. 37 C.F.R.
§ 42.74(a). Generally, however, the Board expects that a proceeding will
terminate after the filing of a settlement agreement. See, e.g., Office Patent
Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012).
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.” The
requirement for terminating review with respect to Ivera is met.
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).” Ivera is the sole petitioner in
this review. The Board has discretion to terminate this review with respect

1 The parties were authorized to file the noted Papers in e-mail
correspondence from Board personnel on June 15, 2015.
2 The settlement agreement is presented as a part of Paper 23 and is
designated “EX 2004.”
IPR2014-01124
Patent 8,647,326

3
to Catheter, and we are cognizant that the motion to terminate was filed
jointly by the parties. We observe also that briefing is not yet complete in
this proceeding.3
Upon consideration of the circumstances of this case, the panel has
determined to terminate this inter partes review as to both Ivera and
Catheter without rendering a final written decision. The oral argument
scheduled for October 7, 2015, is cancelled.
It is
ORDERED that the joint motion to terminate this proceeding (Paper
22) is granted and this proceeding is hereby terminated;
FURTHER ORDERED that, as was timely requested by the parties,
the settlement agreement (part of Paper 23) will be treated as business
confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).

3 The panel entered a Decision to institute trial on January 21, 2015 (Paper
11). Catheter filed a Patent Owner Response on April 20, 2015 (Paper 21).
Ivera has not filed any reply.
IPR2014-01124
Patent 8,647,326

4
FOR PETITIONER:

Matthew A. Smith
Zhuanjia Gu
Jennifer Seraphine
TURNER BOYD LLP
smith@turnerboyd.com
gu@turnerboyd.com
seraphine@turnerboyd.com
docketing@turnerboyd.com

FOR PATENT OWNER:

Edward F. O’Connor
AVYNO LAW, P.C.
efo@avynolaw.com