Taiwan Semiconductor Manufacturing Company, Ltd.v.Tela Innovations. Inc.

Patent Trial and Appeal Board

Sep 24, 2014

12717887 (P.T.A.B. Sep. 24, 2014)

Trials@uspto.gov Paper 27
571-272-7822 Entered: September 24, 2014
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD.,
Petitioner,

v.

TELA INNOVATIONS, INC.,
Patent Owner.
____________

Case IPR2014-00094
Patent 8,490,043 B2

Before MITCHELL G. WEATHERLY, MIRIAM L. QUINN, and
JON B. TORNQUIST, Administrative Patent Judges.

QUINN, Administrative Patent Judge.

JUDGMENT
Termination of Proceeding
37 C.F.R. §§ 42.7242.73

Case IPR2014-00094
Patent 8,490,043 B2

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The parties filed a joint motion to terminate the instant proceeding
pursuant to a settlement agreement. Paper 24. The parties also filed a true
copy of their written settlement agreement, made in connection with the
termination of the instant proceeding, in accordance with 35 U.S.C. § 317(b)
and 37 C.F.R. § 42.74(b). Ex. 2156. Additionally, the parties submitted a
joint request to have their settlement agreement treated as confidential
business information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
Paper 25.
The Board instituted the instant inter partes review of US Patent
No. 8,490,043 B2 (“the ’043 patent”) on April 15, 2014. Paper 11.
Although a patent owner response has been filed (Paper 23), Petitioner has
not filed a reply and no final hearing has been held.
In their joint motion to terminate, the parties indicate that they have
obligations under a Letter of Intent (settlement agreement) to “dismiss, with
prejudice, all adverse proceedings currently pending against the other party,
including without limitation, the matters pending before . . . the U.S. PTO.”
Paper 24, 2. In the event Petitioner is unable to withdraw or dismiss the
proceeding, Petitioner must cease any and all participation in the proceeding.
Id. The underlying civil action involving the patent-at-issue has been
dismissed with prejudice, and the International Trade Commission (ITC) has
terminated the co-pending investigation. Id. at 3.
The parties urge the Board to terminate this instant proceeding with
respect to both Petitioner and Patent Owner. Id. at 4. The parties submit
that termination is appropriate because the issues raised during the trial have
not been briefed fully and the Board has not yet decided the merits of the
proceeding. Id. Petitioner indicates that it will no longer participate even if
Case IPR2014-00094
Patent 8,490,043 B2

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the Board does not terminate the instant proceeding. Id. That means
Petitioner would not file a reply to the Patent Owner Response, nor will
participate in an oral hearing.
According to the parties, Congress and federal courts have expressed
a strong interest in encouraging settlement in litigation. Id. at 3. Although
the cited statements and cases are not binding on the Board1 or our
determinations in post-grant proceedings under the American Invents Act, in
exercising our independent determination, we generally expect that a
proceeding will terminate after the filing of a settlement agreement. See,
e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug.
14, 2012).
Upon consideration of the parties’ contentions, we determine that
terminating the instant proceeding with respect to both Petitioner and Patent
Owner, at this early juncture, promotes efficiency and minimizes
unnecessary costs. Based on the facts of this case, it is appropriate to enter
judgment2 without rendering a final written decision. See 35 U.S.C.
§ 317(a); 37 C.F.R. § 42.72.
Accordingly, it is:
ORDERED that the joint motion to terminate IPR2014-00094 is
granted;

1 Under 37 C.F.R. § 42.74, “[t]he parties may agree to settle any issue in a
proceeding, but the Board is not a party to the settlement and may
independently determine any question of jurisdiction, patentability, or office
practice.” Furthermore, under 37 C.F.R. § 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).”
2 A judgment means a final written decision by the Board, or a termination
of a proceeding. 37 C.F.R. § 42.2.
Case IPR2014-00094
Patent 8,490,043 B2

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FURTHER ORDERED that the instant proceeding is hereby
terminated, pursuant to 35 U.S.C. § 317(a), as to all parties, including
Petitioner and Patent Owner; and
FURTHER ORDERED that the parties’ joint request that the
settlement and agreement be treated as business confidential information
kept separate from the patent file, and made available only to Federal
Government agencies on written request, or to any person on a showing of
good cause, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is
granted.

Case IPR2014-00094
Patent 8,490,043 B2

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PETITIONERS:
David M. O’Dell
David L. McCombs
HAYNES AND BOONE, LLP
david.odell.ipr@haynesboone.com
david.mccombs.ipr@haynesboone.com

PATENT OWNER:

Jon E. Wright
Robert Sterne
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
jwright-PTAB@skgf.com
rsterne-PTAB@skgf.com