NuVasive, Inc.v.Neurovision Medical Products, Inc.

Patent Trial and Appeal Board

Jul 29, 2015

13909966 (P.T.A.B. Jul. 29, 2015)

Trials@uspto.gov Paper No. 19
571.272.7822 Entered: July 29, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

NUVASIVE, INC.,
Petitioner,

v.

NEUROVISION MEDICAL PRODUCTS, INC.,
Patent Owner.
____________

Case IPR2015-00502
Patent 8,634,894 B2
____________

Before MEREDITH C. PETRAVICK, WILLIAM V. SAINDON, and
BENJAMIN D. M. WOOD, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

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

INTRODUCTION
On July 27, 2015, the parties filed a joint motion to terminate the
instant proceeding (Paper 17), along with a true copy of their written
settlement agreement made in connection with the termination of the instant
proceeding (Ex. 1022). The parties also filed a joint request to treat the
IPR2015-00502
Patent 8,634,894 B2
2
settlement agreement as business confidential information. Paper 18. The
Board authorized these filings via email on July 21, 2015. Ex. 1021. For the
reasons set forth below, the motion and request are granted.

DISSCUSION
Under 35 U.S.C. § 317(a), an inter partes review proceeding shall be
terminated with respect to any petitioner upon the joint request of the
petitioner and the patent owner, unless the Patent and Trademark Office has
decided the merits of the proceeding before the request for termination is
filed. This matter is in its initial stages. A decision to institute was entered
on July 16, 2015 (Paper 15). A patent owner response is not due until
October 9, 2015 (see Paper 16), and has not yet been filed. Thus, the merits
have not been decided. 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).”
Petitioner is the sole petitioner in this review. The Board has discretion to
terminate this review with respect to Patent Owner.
Under 35 U.S.C. § 317(b), any agreement or understanding between
the Patent Owner and a Petitioner, including any collateral agreements
referred to in such agreement or understanding, made in connection with, or
in contemplation of, the termination of the proceeding shall be in writing,
and a true copy of such agreement or understanding shall be filed in the
Office. The parties state that they have settled their dispute and have
reached a written agreement to terminate this proceeding. Paper 17, 1–2. In
support of the joint motion, the parties submitted a true copy of their written
agreement as Exhibit 1022.
IPR2015-00502
Patent 8,634,894 B2
3
Upon consideration of the facts in the case before us, we grant the
joint motion and terminate this proceeding as to both Petitioner and Patent
Owner without rendering a final written decision. 37 C.F.R. § 42.74. We
also grant the joint request to maintain Exhibit 1022 as business confidential
in accordance with 37 C.F.R. § 42.74(c).

CONCLUSION
It is:
ORDERED that the joint motion to terminate the proceeding is
granted, and this proceeding is, hereby, terminated; and
FURTHER ORDERED that the parties’ joint request that the
settlement agreement be treated as business confidential information
and kept separate from the file of the involved patent under 35 U.S.C.
§ 317(b) and 37 C.F.R. § 42.74(c) is granted.

PETITIONER:
John S. Kyle
Kyle M. Pendergass
jkyle@klhipbiz.com
kpendergrass@klhipbiz.com

PATENT OWNER:
Joe Paunovich
Michael J. Ram
joepaunovich@quinnemanuel.com
mram@koppelpatent.com