Symphony Health Solutions Corporationv.IMS Health Incorporated

Patent Trial and Appeal Board

Feb 17, 2016

09459161 (P.T.A.B. Feb. 17, 2016)

Trials@uspto.gov Paper 17
Tel: 571-272-7822 Entered: February 17, 2016
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

SYMPHONY HEALTH SOLUTIONS CORPORATION,
Petitioner,

v.

IMS HEALTH INCORPORATED,
Patent Owner.

Case CBM2015-00070
Patent 6,397,224

Before MICHAEL P. TIERNEY, HYUN J. JUNG, and J. JOHN LEE,
Administrative Patent Judges.

TIERNEY, Administrative Patent Judge.

JUDGMENT
Termination of the Proceeding
37 C.F.R. § 42.73

On January 29, 2016, and pursuant to 35 U.S.C. § 327(b) and
37 C.F.R. § 42.74, the parties filed a copy of a settlement agreement (Ex.
2002) along with a joint request to treat the settlement agreement as business
confidential kept separate from the patent file (Paper 16). In addition, the
CBM2015-00070
Patent 6,397,224

2
parties filed a joint motion to terminate the proceeding pursuant to 35 U.S.C.
§ 327. Paper 15.
The standard for settling a covered business method patent review is
set forth in 35 U.S.C. § 327(a), which provides that a review 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. Generally, the Board
expects that a proceeding will terminate after the filing of a settlement
agreement, if the settlement agreement includes all parties. See, e.g., Office
Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012).
The parties have filed such an agreement. Ex. 2002. In their accompanying
motion to terminate, the parties indicate that they have settled their dispute
with regard to U.S. Patent No. 6,397,224, including the underlying patent
litigation between them, IMS Health Inc. v. Symphony Health Solutions
Corp. et al., C.A. No. 13-2071-GMS (D. Del.).
Oral argument has not yet been held. Under these circumstances, we
are persuaded that it is appropriate to terminate this proceeding with respect
to both Petitioner and Patent Owner. Based on the facts of this case, it is
appropriate to enter judgment.1 Therefore, the joint motion to terminate the
proceeding is GRANTED.

1 A judgment means a final written decision by the Board, or a termination
of a proceeding. 37 C.F.R. § 42.2.
CBM2015-00070
Patent 6,397,224

3
Accordingly, it is
ORDERED that the parties’ request that the settlement agreement be
treated as business confidential information, to be kept separate from the
patent file, is GRANTED;
FURTHER ORDERED that the joint motion to terminate the
proceeding is GRANTED;
FURTHER ORDERED that the proceeding is TERMINATED.

CBM2015-00070
Patent 6,397,224

4

PETITIONER:

Scott Marty
Jonathon Talcott
BALLARD SPAHR LLP
martys@ballardspahr.com
talcottj@ballardspahr.com

PATENT OWNER:

Walter Renner
Thomas Rozylowicz
FISH & RICHARDSON P.C.
axf@fr.com
CBM37240-0012CP1@fr.com