`
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`
`
` Paper 12
`
`
` Entered: October 17, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`LOMBARD MEDICAL TECHNOLOGIES PLC
`Petitioner
`v.
`MEDTRONIC, INC.
`Patent Owner
`____________________
`
`Case IPR2013-00269
`Patent 6,306,141 B1
`___________________
`
`Before SALLY C. MEDLEY, STEPHEN C. SIU, and JOSIAH C. COCKS,
`Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
` 37 C.F.R. § 42.5
`
`
`
`Lombard Medical Technologies PLC (“Lombard”) filed a Petition for
`inter partes review on May 6, 2013. Patent Owner Medtronic, Inc.
`(Medtronic) filed a preliminary response on August 8, 2013. On October 17,
`
`
`
`Case IPR2013-00269
`Patent 6,306,141 B1
`
`2013, a conference call was held between counsel for the respective parties
`and Judges Medley, Siu and Cocks.
`The purpose of the conference call was to discuss a settlement
`agreement entered into by the parties. Counsel explained that the parties
`have a written settlement agreement which contemplates the termination of
`the inter partes review proceeding. The parties sought guidance on filing
`their settlement agreement and terminating the Board proceeding.
`Generally, 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. 48756, 48768 (Aug. 14, 2012). The rule governing
`settlement indicates that any agreement between the parties made in
`connection with, or in contemplation of, the termination of a proceeding1
`shall be in writing and filed with the Board. 37 C.F.R. § 42.74.
`Based on the facts of this proceeding, the parties were authorized to,
`and shall file, in addition to the confidential settlement agreement, a joint
`motion to terminate the proceeding briefly explaining why termination is
`appropriate in this case. As explained, the parties also must file, as an
`exhibit, a true copy of their settlement agreement to terminate the
`proceeding. Any request that the agreement be treated as business
`confidential information and be kept separate from the files of the involved
`patent must be filed with the settlement agreement. 37 C.F.R. § 42.74(c).
`The parties are directed to FAQ G3 on the Board’s website page at
`http://www.uspto.gov/ip/boards/bpai/prps.jsp for instructions on how to file
`their settlement agreement as confidential (e.g., uploading as “Parties and
`Board Only”).
`
`
`1 A “proceeding” includes a preliminary proceeding. 37 C.F.R. § 42.2.
`
`2
`
`
`
`Case IPR2013-00269
`Patent 6,306,141 B1
`
`
`Counsel agreed to file the joint motion to terminate and the settlement
`agreement by close of business Monday, October 21, 2013.
`Accordingly, it is
`ORDERED that the parties are authorized to file a joint motion to
`terminate the proceeding;
`FURTHER ORDERED that the joint motion is due October 21, 2013;
`
`and
`
`FURTHER ORDERED that the joint motion shall be accompanied by
`a true copy of the settlement agreement as required by 37 C.F.R. § 42.74(b);
`FURTHER ORDERED that the parties may request that the
`settlement agreement be treated as business confidential information as
`specified by 37 C.F.R. § 42.74(c); and
`FURTHER ORDERED that any confidential settlement agreement
`must be filed electronically via the Patent Review Processing System
`(PRPS) in accordance with the instructions provided on the Board’s website
`(e.g., uploading as “Parties and Board Only”).
`
`
`
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`
`
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`
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`
`
`3
`
`
`
`Case IPR2013-00269
`Patent 6,306,141 B1
`
`PETITIONER:
`
`Steven D. Hemminger
`Christopher B. Kelly
`ALSTON & BIRD LLP
`steve.hemminger@alston.com
`chris.kelly@alston.com
`
`
`PATENT OWNER:
`
`Justin J. Oliver
`Daniel S. Glueck
`FITZPATRICK, CELLA, HARPER & SCINTO
`MEDVASCIPR@fchs.com
`
`
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`
`4
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`
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