W.L. Gore & Associates, Inc.v.Lifeport Sciences LLC

Patent Trial and Appeal Board

Jul 23, 2015

09020749 (P.T.A.B. Jul. 23, 2015)

Trials@uspto.gov Paper 18
Tel: 571-272-7822 Entered: 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 IPR2014-01319
Patent 6,117,167
_______________

Before PHILLIP J. KAUFFMAN, BENJAMIN D. M. WOOD, and
BARRY L. GROSSMAN, Administrative Patent Judges.

GROSSMAN, Administrative Patent Judge.

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

IPR2014-01319
Patent 6,117,167

2

Pursuant to authorization by the Board, LifePort Sciences, LLC (“Patent
Owner”) and W.L. Gore & Associates, Inc. (“Petitioner”) filed a Joint Motion to
Terminate, jointly requesting termination of this inter partes review proceeding
(Paper 16 (“Joint Motion”)) and a Joint Request to Keep Separate requesting that
we treat as confidential the submitted settlement agreement (Paper 17 (“Joint
Request”)).
Under 35 U.S.C. § 317(a), an inter partes review proceeding shall be
terminated with respect to any petitioner upon the joint request of the petitioner
and the patent owner, unless the Patent and Trademark Office has decided the
merits of the proceeding before the request for termination is filed. This matter is
in its preliminary stage. A Decision to Institute was entered on February 25, 2015
(Paper 7). By Stipulation (Paper 15), a Patent Owner Response is not due until
July 29, 2015, and has not yet been filed. Thus, the merits have not been decided
and this proceeding is eligible for termination. 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.
Under 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. Joint Motion 2. In
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Patent 6,117,167

3

support of the Joint Motion, the parties submitted Exhibit 2001 as evidence of their
agreement. The parties also state there are no collateral agreements or
understandings in connection with, or in contemplation of, the termination of this
proceeding. Id.
Upon consideration of the facts in the case 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. § 42.74. We also grant the
Joint Request to maintain Exhibit 2001 as business confidential in accordance with
37 C.F.R. § 42.74(c).
ORDER
Accordingly, it is:
ORDERED that the Joint Motion to Terminate this proceeding is granted
and, accordingly, this proceeding is hereby terminated; and
FURTHER ORDERED that the parties’ Joint Request that the agreement
(Ex. 2001) submitted in support of the Joint Motion be treated as business
confidential information, to be kept separate from the file of U.S. Patent No.
6,117,167, and made available only under the provisions of 35 U.S.C. § 317(b) and
37 C.F.R. § 42.74(c), is granted.

IPR2014-01319
Patent 6,117,167

4

FOR PETITIONER:

Victor Jonas
patentdocketing@faegrebd.com

FOR PATENT OWNER:

Robert Ashbrook
Robert.ashbrook@dechert.com

Kevin Flannery
Kevin.flannery@dechert.com