W. L. Gore & Associates, Inc.v.LIFEPORT SCIENCES LLC

Patent Trial and Appeal Board

Jul 23, 2015

08461513 (P.T.A.B. Jul. 23, 2015)

Trials@uspto.gov Paper 20
571-272-7822 Date: July 23, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

W. L. GORE & ASSOCIATES, INC.,
Petitioner,

v.

LIFEPORT SCIENCES LLC,
Patent Owner.
____________

Case IPR2014-01321
Patent 5,716,365
____________

Before JOSIAH C. COCKS, PHILLIP J. KAUFFMAN, and
BENJAMIN D. M. WOOD, Administrative Patent Judges.

COCKS, Administrative Patent Judge.

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

IPR2014-01321
Patent 5,716,365

2

LifePort Sciences, LLC (“Patent Owner”) and W.L. Gore &
Associates, Inc. (“Petitioner”) filed a “Joint Motion to Terminate,”
(Paper 18) jointly requesting termination of this inter partes review
proceeding, and a “Joint Request to Keep Separate” (Paper 19) requesting
that we treat as confidential the submitted settlement agreement (Ex. 2001).
1

The parties indicate that they “have agreed to settle their dispute
and have reached a written agreement . . . to terminate this IPR.”
Paper 18, 2. The parties also state the following:
The petitioner filed its petition on August 18, 2014. The
patent owner did not file a preliminary response. The Board
instituted trial on February 25, 2015. The patent owner has not
yet substantively responded to the petition nor to the Board’s
decision instituting trial. The Patent-in-Review is expired.
Termination of this IPR is appropriate, consistent with the
strong public policy reasons to favor settlement between the
parties to a proceeding. See Patent Trial Practice Guide § II.N.

Id. at 2–3.
The parties are reminded that the Board is not a party to the
settlement, and may identify independently any question of patentability.
37 C.F.R. § 42.74(a). Generally, however, the Board expects 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).
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

1
The parties were authorized to file the noted documents in e-mail
correspondence from Board personnel on July 14, 2015.
IPR2014-01321
Patent 5,716,365

3

merits of the proceeding before the request for termination is filed.” The
requirement for terminating review with respect to Petitioner is met.
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 this review. The Board has discretion to terminate this review with
respect to Patent Owner.
Pursuant to 35 U.S.C. § 317(b), any agreement or understanding
between the Patent Owner and a 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 in the Joint Motion
that the parties and Patent Owner’s parent corporation, Acacia Research
Corporation, have agreed to settle their dispute and have reached a written
agreement to terminate this proceeding. Paper 19, 2. Also, as noted by the
parties, briefing is not yet complete, and we have not decided the merits in
this proceeding.
Upon consideration of the circumstances of this case, the panel has
determined to terminate this inter partes review as to both Petitioner and
Patent Owner without rendering a final written decision.
It is
ORDERED that the “Joint Motion to Terminate” (Paper 18) is
granted and this proceeding is terminated; and
IPR2014-01321
Patent 5,716,365

4

FURTHER ORDERED that, as was requested timely by the parties,
the settlement agreement (Ex. 2001) will be treated as business confidential
information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).

For PETITIONER:

Victor Jonas
patentdocketing@faegrbd.com

For PATENT OWNER:

Robert Ashbrook
Robert.ashbrook@dechert.com

Kevin Flannery
Kevin.flannery@dechert.com