Nautique Boat Company, Inc.v.Malibu Boats, LLC

Patent Trial and Appeal Board

Feb 25, 2015

13830799 (P.T.A.B. Feb. 25, 2015)

Trials@uspto.gov Paper 22
571-272-7822 Entered: February 25, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

NAUTIQUE BOAT COMPANY, INC.,
Petitioner,

v.

MALIBU BOATS, LLC,
Patent Owner.
____________

Case IPR2014-01045
Patent 8,539,897 B1
____________

Before MICHAEL W. KIM, DONNA M. PRAISS, and
KRISTINA M. KALAN, Administrative Patent Judges.

KALAN, Administrative Patent Judge.

JUDGMENT
Termination of the Proceeding
37 C.F.R. § 42.72

IPR2014-01045
Patent 8,539,897 B1

2
The parties have requested that the above-captioned proceeding be
terminated pursuant to a settlement. The Board authorized the parties to file a joint
request to terminate the above-captioned proceeding on February 12, 2015.
On February 20, 2015, the parties filed a joint motion to terminate the
above-captioned proceeding pursuant to 35 U.S.C. § 317 (Paper 20); a joint request
to file the settlement agreement as business confidential information, to be kept
separate from the patent file pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
§ 42.74(c) (Paper 21); and a copy of the settlement agreement (Ex. 3002).
Generally, 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 the 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 Petitioner is met.
Under 35 U.S.C. § 317(a), “[if] 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).” Nautique Boat Company, Inc. is the sole petitioner in this
review. The Board has discretion to terminate this review with respect to Malibu
Boats, LLC as Patent Owner.
Petitioner filed a Petition on June 27, 2014. Patent Owner filed a
Preliminary Response to the Petition on September 26, 2014. The Board instituted
inter partes review on November 26, 2014. Patent Owner has not yet filed a Patent
Owner Response. This proceeding has not resulted in a final decision on the
merits.
IPR2014-01045
Patent 8,539,897 B1

3
The joint motion to terminate indicates that the parties settled their disputes
involving U.S. Patent No. 8,539,897 B1 (“the ’897 patent”). Paper 20, 1. The
joint motion to terminate further indicates that (1) the parties have settled their
dispute and reached a written settlement that includes an agreement to terminate
this inter partes review; and (2) the district court proceeding between the parties
involving the ’897 patent, Malibu Boats, LLC v. Nautique Boat Company, Inc.,
Case No. 3:13-cv-0656 (E.D. Tenn.), was dismissed with prejudice on February
17, 2015. Id. at 1–2.
Based on the facts of the case, it is appropriate to terminate the proceeding
as to both Petitioner and Patent Owner. Therefore, the joint motion to terminate
and the request to file the settlement agreement as business confidential
information are granted.
Accordingly, it is
ORDERED that the joint motion to file the settlement agreement as business
confidential information, to be kept separate from the patent file, is granted;
FURTHER ORDERED that the joint motion to terminate the proceeding is
granted; and
FURTHER ORDERED that the proceeding is terminated.

IPR2014-01045
Patent 8,539,897 B1

4
For PETITIONER:

Ryan Santurri
rsanturri@addmg.com

Christopher Regan
cregan@addmg.com

For PATENT OWNER:

John Grover
2jmg@knobbe.com

Douglas Muehlhauser
2dgm@knobbe.com

Brenton Babcock
2brb@knobbe.com

Ted Cannon
2tmc@knobbe.com