Terumo Cardiovascular Systems Corporationv.Sheila King

Patent Trial and Appeal Board

Sep 15, 2015

09760429 (P.T.A.B. Sep. 15, 2015)

Trials@uspto.gov Paper No. 19
571-272-7822 Entered: September 15, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

TERUMO CARDIOVASCULAR SYSTEMS CORPORATION,
Petitioner,

v.

SHEILAH D. KING and ALLEN PAIGE KING,
Patent Owner.
____________

Case IPR2015-00263
Patent 6,423,268 B1
____________

Before MICHAEL W. KIM, HYUN J. JUNG, and JAMES A. WORTH,
Administrative Patent Judges.

JUNG, Administrative Patent Judge.

ORDER
Termination of the Proceeding
35 U.S.C. § 317 and 37 C.F.R. § 42.72

IPR2015-00263
Patent 6,423,268 B1

2
Pursuant to authorization by the Board via email sent September 1,
2015, Terumo Cardiovascular Systems Corporation (“Petitioner”) and
Sheilah D. King and Allen Paige King (“Patent Owner”) filed a Joint Motion
to Terminate Proceeding under 35 U.S.C. § 317 (Paper 17, “Mot.”) and a
Joint Request to File Settlement Agreement as Business Confidential
Information Pursuant to 35 U.S.C. § 317 (Paper 18).
Under 35 U.S.C. § 317(a), an inter partes review proceeding shall be
terminated with respect to any petitioner upon the request of the petitioner
and the patent owner, unless the Office has decided the merits of the
proceeding before the request for termination is filed. The present
proceeding is in its preliminary stage. A Decision to Institute was entered
June 1, 2015 (Paper 15). Neither party has filed any substantive papers
subsequent to the Decision to Institute. The merits have not been decided,
and this proceeding is eligible for termination. See Mot. 2. Furthermore,
under 35 U.S.C. § 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).” Petitioner is the sole petitioner in the present
review, and the Board has discretion to terminate this review with respect to
Patent Owner.
Under 35 U.S.C. § 317(b), any agreement or understanding between
Patent Owner and Petitioner, including any collateral agreements referred to
in such agreement or understanding, made in connection with, or in
contemplation of, the termination of the proceeding shall be in writing, and a
true copy of such agreement or understanding shall be filed in the Office.
Patent Owner and Petitioner state that they have settled their dispute and
have reached agreement to terminate this proceeding. Mot. 1. In support of
IPR2015-00263
Patent 6,423,268 B1

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their joint motion, the parties filed Exhibit 1038 as a true copy of their
written agreement. Id.
Upon consideration of record before us, we grant the joint motion and
terminate this proceeding as to both Petitioner and Patent Owner without
rendering a final written decision. 37 C.F.R. § 42.72. We also grant the
joint request to maintain Exhibit 1038 as business confidential in accordance
with 37 C.F.R. § 42.74(c).

ORDER
Accordingly, it is:
ORDERED that the Joint Motion to Terminate Proceeding under 35
U.S.C. § 317 is granted, and accordingly, this proceeding is hereby
terminated; and
FURTHER ORDERED that the Joint Request to File Settlement
Agreement as Business Confidential Information Pursuant to 35 U.S.C.
§ 317 is granted, and thus, Exhibit 1038 is to be treated as business
confidential information, to be kept separate from the file of U.S. Patent No.
6,423,268 B1, and made available only under the provisions of 35 U.S.C.
§ 317(b) and 37 C.F.R. § 42.74(c).

IPR2015-00263
Patent 6,423,268 B1

4
PETITIONER:
Mathias W. Samuel
Stephen R. Schaefer
Conrad A. Gosen
FISH & RICHARDSON P.C.
samuel@fr.com
schaefer@fr.com
gosen@fr.com

PATENT OWNER:
Gary W. Hamilton
Raymond White
HAMILTON P.C.
garywhamilton2@gmail.com