Ty-Flot, Inc.v.Python Safety, Inc.

Patent Trial and Appeal Board

May 29, 2015

12725442 (P.T.A.B. May. 29, 2015)

Trials@uspto.gov Paper 12
571-272-7822 Date: May 29, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

TY-FLOT, INC.,
Petitioner,

v.

PYTHON SAFETY, INC.,
Patent Owner.
____________

Case IPR2014-01489
Patent 8,646,768 B2
____________

Before MIRIAM L. QUINN, MEREDITH C. PETRAVICK, and JAMES P.
CALVE, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

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

IPR2014-01489
Patent 8,646,768 B2

2

I. DISCUSSION
On May 20, 2015, the parties filed a Joint Motion to Terminate
Proceeding Pursuant to 35 U.S.C. § 317(A) (“Joint Motion to Terminate”)
representing that they had settled all of their disputes relating to U.S. Patent
No. 8,646,768 (“the ’768 patent”) and jointly requesting termination of this
inter partes review. Paper 11, 2. The parties also filed a true copy of their
Confidential Settlement Agreement (“Settlement Agreement,” Ex. 2001) and
requested that the Settlement Agreement be treated as business confidential
information and kept separate from the ’768 patent file pursuant to 35 U.S.C.
§ 317(b) and 37 C.F.R. § 42.74(c). Id. at 2, 34. The parties represent that
the sole, related district court litigation involving the ’768 patent was settled
by joint stipulation filed on May 20, 2015. Id. at 3.
Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
this chapter 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.” In
addition, “[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).” 35 U.S.C. § 317(a). We instituted an inter partes review of the
’768 patent on December 16, 2014. Paper 7. The parties state in their Joint
Motion to Terminate that they have not completed their submissions, such as
Petitioner’s Reply to Patent Owner’s Response, Motions for Observations,
Motions to Exclude Evidence, responses, and replies thereto, and the Oral
Hearing is scheduled for August 5, 2015. Paper 11, 2. Petitioner Ty-Flot,
Inc. is the sole petitioner in this review.
IPR2014-01489
Patent 8,646,768 B2

3

Upon consideration of the circumstances of this case, we determine
that it is appropriate to terminate this proceeding without rendering a final
written decision. See 37 C.F.R. § 42.72.
II. ORDER
Accordingly, it is:
ORDERED that the parties joint request to treat the Confidential
Settlement Agreement (Ex. 2001) as business confidential information under
35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is granted;
FURTHER ORDERED that the parties’ Joint Motion to Terminate
Proceeding Pursuant to 35 U.S.C. § 317(A) is granted, and this proceeding
is hereby terminated.

IPR2014-01489
Patent 8,646,768 B2

4

For PETITIONER:
Robert R. Deleault
Ross K. Krutsinger
MESMER & DELEAULT, PLLC
bob@biz-patlaw.com
ross@biz-patlaw.com

For PATENT OWNER:

James W. Kayden
MCCLURE, QUALEY & RODACK, LLP
kayden@mqrlaw.com

Jeffrey T. Breloski
MORRIS, MANNING, & MARTIN, LLP
jbreloski@mmmlaw.com