Owens Corningv.CertainTeed Corporation

Patent Trial and Appeal Board

Oct 14, 2015

14307677 (P.T.A.B. Oct. 14, 2015)

Trials@uspto.gov Paper 7
571-272-7822 Entered: October 14, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

OWENS CORNING,
Petitioner,

v.

CERTAINTEED CORPORATION,
Patent Owner.
____________

Cases IPR2015-01159 (Patent 8,950,161 B2)
IPR2015-01160 (Patent 8,959,875 B2)
IPR2015-01161 (Patent 8,959,876 B2)
1

____________

Before BENJAMIN D. M. WOOD, JAMES A. TARTAL, and
KRISTINA M. KALAN, Administrative Patent Judges.

KALAN, Administrative Patent Judge

TERMINATION
Dismissing the Proceeding
37 C.F.R. § 42.5(a), 37 C.F.R. § 42.71(a)

1
This termination addresses the same issues in each of the three
proceedings. Therefore, we exercise our discretion to issue one order to be
filed in each proceeding. The parties, however, are not authorized to use this
style of heading.
IPR2015-01159 (Patent 8,950,161 B2)
IPR2015-01160 (Patent 8,959,875 B2)
IPR2015-01161 (Patent 8,959,876 B2)

2
The parties have requested that the above-captioned proceedings be
terminated pursuant to a settlement. The Board authorized the parties to file
a joint motion to terminate the above-captioned proceedings on September
23, 2015.
On September 25, 2015, and pursuant to 35 U.S.C. § 317, the parties
filed a joint motion to terminate in each of the above-captioned proceedings.
IPR2015-001159, Paper 6; IPR2015-01160, Paper 6; IPR2015-01161,
Paper 6. The joint motion to terminate in each case included a joint request
to treat 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), along with a copy of the settlement agreement. IPR2015-
001159, Ex. 2001; IPR2015-01160, Ex. 2001; IPR2015-01161, Ex. 2001.
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. 48756, 48768 (Aug. 14, 2012). This case is in the
preliminary proceeding stage. A preliminary proceeding begins with the
filing of a petition for instituting a trial and ends with a written decision as to
whether trial will be instituted. See 37 C.F.R. § 42.2. Petitioner filed a
Petition in each case on May 11, 2015. IPR2015-001159, Paper 1;
IPR2015-01160, Paper 1; IPR2015-01161, Paper 1. Patent Owner has not
filed Preliminary Responses. No decisions whether to institute a trial have
been made.
The joint motions to terminate indicate that, on September 21, 2015,
the parties resolved their disputes involving the patents at issue in the above-
captioned proceedings before the Board. Paper 6, 1–2. The parties represent
IPR2015-01159 (Patent 8,950,161 B2)
IPR2015-01160 (Patent 8,959,875 B2)
IPR2015-01161 (Patent 8,959,876 B2)

3
that “related litigation is pending in the U.S. District Court for the District of
Delaware (Civ. A. No. 1:14-cv-00510-SLR) involving the patents-at-issue in
IPR Nos. 2014-01397, 2014-01401, 2014-01402, 2014-01403, and 2014-
01404” but that the litigation has been stayed pending the outcome of those
instituted IPR proceedings. Id. at 3. The parties further represent that they
“do not contemplate litigation” related to the patents at issue in the above-
captioned proceedings “unless and until permitted to do so pursuant to the
terms of the Confidential Limited Settlement Agreement.” Id. at 4.
Based on the facts of the case, and in view of the parties’ joint request
for termination of these proceedings, we determine that it is appropriate to
dismiss the petitions as to both Petitioner and Patent Owner without
rendering either a decision to institute or a final written decision. See 37
C.F.R. §§ 42.5(a); 42.71(a). Therefore, the joint motions to terminate and
the joint requests to treat the settlement agreements as business confidential
information are granted. This paper does not constitute a final written
decision pursuant to 35 U.S.C. § 318(a).
Accordingly, it is
ORDERED that the joint requests to treat the settlement agreements
as business confidential information, to be kept separate from the patent file,
are granted;
FURTHER ORDERED that the joint motions to terminate the
proceedings are granted; and
FURTHER ORDERED that the Petitions for Inter Partes Review of
the above-referenced patents are dismissed.

IPR2015-01159 (Patent 8,950,161 B2)
IPR2015-01160 (Patent 8,959,875 B2)
IPR2015-01161 (Patent 8,959,876 B2)

4
FOR PETITIONER:

Jeffrey Kushan
IPRNotices@sidley.com

Peter Choi
IPRNotices@sidley.com

FOR PATENT OWNER:

Mehran Arjomand
15681-161-IPR@mofo.com

Jack Smith
15681-161-IPR@mofo.com

Stephen Jones
15681-161-IPR@mofo.com