John's Lone Star Distribution, Inc.v.Thermolife International, LLC

Patent Trial and Appeal Board

Jun 16, 2015

13038537 (P.T.A.B. Jun. 16, 2015)

Trials@uspto.gov Paper 35
Tel: 571-272-7822 Entered: June 16, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

JOHN’S LONE STAR DISTRIBUTION, INC.,
Petitioner,

v.

THERMOLIFE INTERNATIONAL, LLC,
Patent Owner.
____________

Case IPR2014-01201
Patent 8,455,531 B2
____________

Before JACQUELINE WRIGHT BONILLA, SHERIDAN K. SNEDDEN,
and ZHENYU YANG, Administrative Patent Judges.

BONILLA, Administrative Patent Judge.

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

IPR2014-01201
Patent 8,455,531 B2

2
On June 5, 2015, the parties filed a joint motion to terminate this
proceeding (Paper 33), along with a true copy of their written settlement
agreement (Ex. 2024). The parties indicated in their joint motion that they
have reached an agreement to terminate this proceeding pertaining to U.S.
Patent No. 8,455,531 B2 (“the ’531 patent”). Paper 33, 2. On the same day,
the parties also filed another joint motion requesting that the settlement
agreement be treated as business confidential information and kept separate
from the file of the ’531 patent. Paper 34, 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.” We
instituted a trial in this proceeding as to claims 1–3, 5, 7–11, 14, 15, 17, 18,
22, 25, 27–31, 34, 35, 37, 38, 42, 44, 46–50, 53, 54, 56, 57, and 61 of the
’531 patent (Paper 12) on February 2, 2015, but we have not decided yet the
merits in relation to this proceeding.
Further, 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 the termination of the trial.”
As the parties have filed a true copy of their written settlement agreement,
which constitutes the entire agreement between the parties with respect to
this inter partes review (Ex. 2024, 2), we determine that it is appropriate to
terminate this proceeding without rendering a final written decision as to the
patentability of claims 1–3, 5, 7–11, 14, 15, 17, 18, 22, 25, 27–31, 34, 35,
IPR2014-01201
Patent 8,455,531 B2

3
37, 38, 42, 44, 46–50, 53, 54, 56, 57, and 61 of the ’531 patent. See 37
C.F.R. §§ 42.72, 42.74.
As requested by the parties, the settlement agreement will be treated
as business confidential information and kept separate from the file of the
’531 patent. 37 C.F.R. § 42.74(c).

Accordingly, it is
ORDERED that the parties’ joint request that the settlement
agreement be treated as business confidential information is GRANTED;
and
FURTHER ORDERED that the joint motion to terminate the
proceeding is GRANTED; and
FURTHER ORDERED that the proceeding is TERMINATED.

IPR2014-01201
Patent 8,455,531 B2

4
PETITIONER:

John Rollins
jfr@burchdallmann.com

Andrew Dallmann
asd@burchdallmann.com

PATENT OWNER:

Joseph Lucci
jlucci@bakerlaw.com

William Smith
wsmith@bakerlaw.com

David Farsiou
dfarsiou@bakerlaw.com