RPC Formatec GmbHv.Trudell Medical InternationalDownload PDFPatent Trial and Appeal BoardOct 24, 201413313840 (P.T.A.B. Oct. 24, 2014) Copy Citation Trials@uspto.gov IPR2014-01040 (Paper 10) Tel: 571-272-7822 IPR2014-01127 (Paper 10) Entered: October 24, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ RPC FORMATEC GMBH, Petitioner, v. TRUDELL MEDICAL INTERNATIONAL, Patent Owner. _______________ Cases IPR2014-01040 (Patent 8,505,773) IPR2014-01127 (Patent 8,662,075)1 _______________ Before RAMA G. ELLURU, JAMES A. TARTAL, and GEORGE R. HOSKINS, Administrative Patent Judges. ELLURU, Administrative Patent Judge. JUDGMENT Termination of the Proceedings 37 C.F.R. § 42.72 1This order addresses motions to terminate based on a settlement agreement that resolves both cases. We, therefore, exercise our discretion to issue a single order to be entered in each case. The parties are not authorized to use this style heading in any filing. Case IPR2014-01040 (Patent 8,505,773) Case IPR2014-01127 (Patent 8,662,075) 2 The earlier of the petitions in these two proceedings was filed on June 26, 2014. Paper 22. The Patent Owner Preliminary Responses are not yet due. The parties have requested that these trial proceedings be terminated pursuant to a settlement. We authorized the parties to file a joint request to terminate via e-mail. On October 1, 2014, the parties filed a joint motion to terminate, as well as a joint motion requesting that the joint settlement agreement be treated as business confidential information and sealed. Papers 6 and 7; see also 35 U.S.C. § 317; 37 C.F.R. § 42.74. With their motions to terminate and to seal, the parties also filed a copy of a written settlement agreement. Ex. 1009. Subsequent to our order denying the parties’ joint motion to terminate without prejudice and granting the request to file the settlement agreement as confidential information (Paper 8), the parties, pursuant to our authorization, filed a supplemental joint motion to terminate IPR2014-01040 and 2014-01127. Paper 9. These proceeding are in the preliminary proceeding state. Decisions on institution have not been issued. The parties indicate that they have settled their dispute involving the relevant patents, U.S. Patent Nos. 8,662,075 and 8,505,773. Id. at 1-2. Specifically, the parties have stipulated to dismiss, and the court has dismissed their district court case: Trudell Medical Int’l v. RPC Formatec GmbH, No. 1:2014-cv-00032 (E.D. Va). Id. The parties state that there are no other proceedings related to the challenged patents. Id. The parties explain that termination is appropriate because we have not yet decided the merits of the proceedings; Petitioner will not further participate in 2 The Paper Numbers refer to the Paper Numbers in IPR2014-01040. Case IPR2014-01040 (Patent 8,505,773) Case IPR2014-01127 (Patent 8,662,075) 3 these proceedings, even if they are not terminated; no dispute remains between Patent Owner and the Petitioner involving the relevant patents; and because these proceedings are at a very early stage and we have not determined the merits of these proceedings, termination of the proceedings promotes the Congressional goal to establish a more efficient and streamlined patent system that limits unnecessary and counterproductive litigation costs. Id. at 2-3 (citation omitted). Under these circumstances, we determine that it is appropriate to enter judgment and terminate these proceedings. 37 C.F.R. § 42.72. In consideration of the foregoing, it is hereby: ORDERED that the joint motion to terminate these proceedings is GRANTED; and FURTHER ORDERED that these proceedings, IPR2014-01040 and IPR2014-01127, are TERMINATED. Case IPR2014-01040 (Patent 8,505,773) Case IPR2014-01127 (Patent 8,662,075) 4 FOR PETITIONER: David McCombs Thomas B. King HAYNES AND BOONE, LLP David.mccombs.ipr@haynesboone.com ipr.thomas.king@haynesboone.com Brian E. Ferguson WEIL, GOTSHAL & MANGES LLP brian.ferguson@weil.com FOR PATENT OWNER: Andrew D. Stover Nicholas Restauri BRINKS GILSON & LIONE astover@brinksgilson.com nrestauri@brinksgilson.com Copy with citationCopy as parenthetical citation
