Zimmer Biomet Holdings, Inc.v.Four Mile Bay, LLC

Patent Trial and Appeal Board

Feb 22, 2016

13571375 (P.T.A.B. Feb. 22, 2016)

Trials@uspto.gov Paper 18
Tel: 571-272-7822 Entered: February 22, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
ZIMMER BIOMET HOLDINGS, INC. and
ZIMMER DENTAL INC.,
Petitioner,

v.

FOUR MILE BAY, LLC,
Patent Owner.
_______________

Case IPR2015-01058
Patent 8,684,734 B1
_______________

Before BENJAMIN D. M. WOOD, RICHARD E. RICE, and
TIMOTHY J. GOODSON, Administrative Patent Judges.

RICE, Administrative Patent Judge.

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

IPR2015-01058
Patent 8,684,734 B1

2
On February 19, 2016, the Parties filed a Joint Motion to Terminate
Proceeding (Paper 15), jointly requesting based on a Settlement Agreement
(Ex. 1015) that we terminate the instant inter partes review proceeding
involving U.S. Patent No. 8,684,734 B1 (“the ’734 patent”). The panel
authorized the filing of the Motion to Terminate via e-mail on February 16,
2016. The Parties also filed a Joint Request to Treat Settlement Agreement
as Business Confidential under 35 U.S.C § 317(b) and 37 C.F.R. § 42.74(c).
Paper 16.
The Parties state in support of their Motion to Terminate:
Termination of this proceeding is appropriate because a
final written decision has not been reached and the Parties will
no longer be participating in this proceeding. The Parties have
settled their disputes and executed a settlement agreement to
terminate the IPR proceedings involving the ’734 patent
(IPR2015-0l058, -1059), as well as the district court litigation
involving the ’734 patent: Four Mile Bay LLC v. Zimmer
Holdings, Inc. et al., Civil Action No. 3:14-CV-1300 (NB)-
(JEM) (N.D. Ind.). The Parties filed a stipulation of dismissal in
the related district court action on February 11, 2016.

Paper 15, 2.
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.”
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).” Generally, the Board expects
that a proceeding will terminate after the filing of a settlement agreement.
IPR2015-01058
Patent 8,684,734 B1

3
See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768
(Aug. 14, 2012).
In this case, the proceeding is at a relatively-early stage, and the
Parties have filed with the Board a true copy of their Settlement Agreement
agreeing to terminate the proceeding.
Upon consideration of the circumstances of this case, the panel has
determined that termination of this inter partes review is appropriate without
rendering a final written decision.
Accordingly, it is:
ORDERED that the Parties’ Request to Treat Settlement Agreement
as Business Confidential (Paper 16) is hereby granted;
FURTHER ORDERED that the Parties’ Settlement Agreement
(Ex. 1015) shall be treated as business confidential information under
35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c);
FURTHER ORDERED that the Parties’ Motion to Terminate
(Paper 15) is hereby granted; and
FURTHER ORDERED that this proceeding is hereby terminated.

IPR2015-01058
Patent 8,684,734 B1

4

PETITIONER:
Naveen Modi
Paromita Chatterjee
Srikala P. Atluri
Paul Hastings LLP
naveenmodi@paulhastings.com
srikalaatluri@paulhastings.com
mitachatterjee@paulhastings.com

PATENT OWNER:
Patrick Richards
Richards Patent Law P.C.
patrick@richardspatentlaw.com