NJOY, Inc.v.FONTEM HOLDINGS 1 B.V.

Patent Trial and Appeal Board

Nov 24, 2015

12944123 (P.T.A.B. Nov. 24, 2015)

Trials@uspto.gov Paper 39
Tel: 571-272-7822 Entered: November 24, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

NJOY, INC.,
Petitioner,

v.

FONTEM HOLDINGS 1 B.V.,
Patent Owner.
____________

Case IPR2014-01289
Patent 8,393,331 B2
____________

Before JACQUELINE WRIGHT BONILLA, BRIAN J. McNAMARA, and
JO-ANNE M. KOKOSKI, 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

IPR2014-01289
Patent 8,393,331 B2

2
On November 17, 2015, the parties filed a joint motion to terminate
this proceeding (Paper 36), along with a true copy of their written settlement
agreement (Ex. 2092). The parties indicated in their joint motion that they
have reached an agreement to terminate this proceeding pertaining to U.S.
Patent No. 8,393,331 B2 (“the ’331 patent”). Paper 36, 3. On the same day,
the parties also filed a joint motion requesting that the settlement agreement
be treated as business confidential information and kept separate from the
file of the ’331 patent. Paper 37.
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 1–5 of the ’331 patent (Paper
8) on February 19, 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. 2092, Settlement Agreement, § 4.2, Global
License Agreement, § 6.10), we determine that it is appropriate to terminate
this proceeding without rendering a final written decision as to the
patentability of claims 1–5 of the ’331 patent. See 37 C.F.R. §§ 42.72,
42.74.
IPR2014-01289
Patent 8,393,331 B2

3
As requested by the parties, the settlement agreement will be treated
as business confidential information and kept separate from the file of
the ’331 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;
FURTHER ORDERED that the joint motion to terminate the
proceeding is GRANTED; and
FURTHER ORDERED that the proceeding is TERMINATED.

IPR2014-01289
Patent 8,393,331 B2

4
PETITIONER:
Charles Larsen
Charles.larsen@ropesgray.com

James R. Myers
James.myers@ropesgray.com

Megan F. Raymond
Megan.raymond@ropesgray.com

Benjamin H. Huh
Benjamin.huh@ropesgray.com

J. Steven Baughman
Steven.baughman@ropesgray.com

PATENT OWNER:

Michael Wise
mwise@perkinscoie.com

Joseph Hamilton
jhamilton@perkinscoie.com