MDX Medical, Inc.v.Healthgrades Operating Company Inc.

Patent Trial and Appeal Board

Apr 16, 2015

13551471 (P.T.A.B. Apr. 16, 2015)

Trials@uspto.gov Paper 23
571-272-7822 Entered: April 16, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

MDx MEDICAL, INC.,
Petitioner,

v.

HEALTH GRADES, INC.,
Patent Owner.
____________

Case IPR2014-01090
Patent 8,719,052 B2

Before MICHAEL W. KIM, PATRICK R. SCANLON, and
DAVID C. MCKONE, Administrative Patent Judges.

SCANLON, Administrative Patent Judge.

JUDGMENT
Termination of Proceeding
37 C.F.R. § 42.72
IPR2014-01090
Patent 8,719,052 B2

2
On April 10, 2015, the parties filed a Joint Motion to Terminate
Proceeding Pursuant to 35 U.S.C. § 317 (Paper 20) and a Joint Request to File
Settlement Agreement as Business Confidential Information under 35 U.S.C.
§ 317 (Paper 21). The Joint Motion to Terminate Proceeding is accompanied
by a copy of a settlement agreement styled “Patent License and Settlement
Agreement” and filed as Exhibit 2012. The parties represent that Exhibit
2012 is a “true and correct [copy]” of their agreement. Paper 20, 2: see also
Paper 21, 1 (identifying the exhibit as a “true, unredacted copy of the parties’
Settlement Agreement”). The Board authorized the filing of these papers via
e-mail on April 10, 2015.
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 the patent owner, unless the Office has decided
the merits of the proceeding before the request for termination is filed.” The
parties indicate that they have settled their dispute involving U.S. Patent No.
8,719,052 (“the ’052 patent”) and have agreed to terminate this inter partes
review. Paper 20, 1. The parties further indicate that the related district court
cases are settled and closed, and “Patent Owner represents also represents that
no additional district court litigation is currently pending and none is
contemplated in the foreseeable future.” Id. at 2.
Although we instituted an inter partes review of claims 1–4, 6–11, 15–
29, and 33 of the ’052 patent on January 13, 2015 (Paper 9), the proceeding is
still in its early stages and Patent Owner has not filed a Patent Owner
Response. We have reviewed Exhibit 2012 and determine that, under the
present circumstances, it is appropriate to enter judgment and terminate the
proceeding without rendering a final written decision under 37 C.F.R. § 42.72.
IPR2014-01090
Patent 8,719,052 B2

3

In consideration of the foregoing, it is hereby:
ORDERED that the joint motion to terminate this proceeding is
granted;
FURTHER ORDERED that this proceeding is terminated; and
FURTHER ORDERED that the joint request that the Patent License
and Settlement Agreement (Ex. 2012) be treated as business confidential
information and be kept separate from the file of the involved patent pursuant
to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is granted.
IPR2014-01090
Patent 8,719,052 B2

4

PETITIONER:

Scott Stimpson
sstimpson@sillscummis.com

David Lee
dlee@sillscummis.com

PATENT OWNER:
Timothy Scull
tscull@merchantgould.com