IPR2020-00209 (P.T.A.B. Jun. 17, 2020)

Omni MedSci, Inc.

Patent Trials and Appeals BoardJun 17, 2020

IPR2020-00209 (P.T.A.B. Jun. 17, 2020)

Trials@uspto.gov 571-272-7822 Paper No. 13 Date Entered: June 17, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ APPLE INC., Petitioner, v. OMNI MEDSCI, INC., Patent Owner. ____________ IPR2020-00209 Patent 10,213,113 B2 ____________ Before GRACE KARAFFA OBERMANN, JOHN F. HORVATH, and SHARON FENICK, Administrative Patent Judges. FENICK, Administrative Patent Judge. DECISION Settlement Prior to Institution of Trial 37 C.F.R. § 42.74 IPR2020-00209 Patent 10,213,113 B2 2 As authorized in our order of June 5, 2020 (Paper 11), the parties have filed an Amended Motion to Terminate this proceeding. Paper 12 (“Amended Motion to Terminate”). In the Amended Motion to Terminate the parties note that in the district court they dismissed their respective claims and counterclaims concerning the patent that is the subject of this proceeding. Amended Mot. to Terminate, 1–2. The Amended Motion to Terminate explains reasons termination is appropriate and states that no other inter partes reviews of U.S. Patent 10,213,113 B2 (“the ’113 patent”) are pending, and the parties do not contemplate any future litigation or proceeding involving the ’113 patent. Id. at 1–3. The parties previously filed a copy of a written settlement agreement (Ex. 1067) and we granted their joint request to keep the settlement agreement separate from the file of the involved patent under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 11. In the Amended Motion to Terminate, the parties “certify that this settlement agreement (Ex. 1067) represents the complete agreement, including all terms and conditions, between the parties and includes all (and there are no other) collateral agreements or understandings made in connection with, or in contemplation of, the termination of this proceeding as required by 35 U.S.C. § 317(b).” Paper 12, 1. In consideration of the above, we agree that it is appropriate to terminate this proceeding without rendering a final written decision. 37 C.F.R. § 42.72. It is, therefore, ORDERED that the Amended Joint Motion to Terminate the proceeding is GRANTED and the proceeding is hereby terminated. IPR2020-00209 Patent 10,213,113 B2 3 For PETITIONER: Jeffrey Kushan Ching-Lee Fukuda Thomas Broughan SIDLEY AUSTIN LLP jkushan@sidley.com clfukuda@sidley.com tbroughan@sidley.com For PATENT OWNER: Thomas Lewry John LeRoy Robert Tuttle John Halan Christopher Smith Andrew Turner BROOKS KUSHMAN P.C. tlewry@brookskushman.com jleroy@brookskushman.com rtuttle@brookskushman.com jhalan@brookskushman.com csmith@brookskushman.com aturner@brookskushman.com