`571-272-7822
`
`
`
`
`
`
`
`Paper 29
`Entered: August 20, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ÖSSUR HF AND ÖSSUR AMERICAS, INC.
`Petitioners
`
`v.
`
`OTTO BOCK HEALTHCARE LP
`Patent Owner
`____________
`
`Case IPR2014-00145
`Patent 6,726,726 B2
`____________
`
`Before SCOTT E. KAMHOLZ, HYUN J. JUNG, and
`SCOTT A. DANIELS, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Termination of the Proceeding
`37 C.F.R. § 42.74
`
`
`
`IPR2014-00145
`Patent 6,726,726 B2
`
`
`Össur and Otto Bock executed a Settlement Agreement (Ex. 2015) on
`
`or about July 9, 2014, with respect to litigation in the United States District
`Court for the Central District of California, Otto Bock HealthCare LP v.
`Össur hf and Össur Americas, Inc., Case No. SACV13-00891-CJC (ANx),
`and this inter partes review. The parties filed a joint stipulation for dismissal
`with prejudice on July 17, 2014, and the Court dismissed the case with
`prejudice on July 21, 2014.
`Subsequently, the parties filed a Joint Motion to Terminate
`Proceedings Pursuant to 35 U.S.C. § 317, (Paper 22), accompanied by joint
`requests, (Papers 23, 25), to treat their Settlement Agreement, as well as
`prior Agreements referenced in the Settlement Agreement, as business
`confidential information pursuant to 35 U.S.C. § 317(b). The parties’
`written Settlement Agreement (Ex. 2015), and the referenced Agreements
`(Exs. 2016-17), were also filed.
`For the reasons provided below, the joint motion to terminate is
`granted. The joint request that the settlement agreement be treated as
`business confidential information is also granted.
`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.” The
`parties stated in their motion that “[t]he parties have settled their dispute, and
`have reached agreement to terminate this inter partes review.” Paper 22, 2.
`The parties are reminded that the Board is not a party to the settlement,
`and may independently identify any question of patentability. 37 C.F.R.
`
`
`
`2
`
`
`
`IPR2014-00145
`Patent 6,726,726 B2
`
`§ 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). Otto
`Bock has not yet filed a Patent Owner Response, and we have not decided
`the merits of the proceeding.
`In view of the parties’ settlement agreement, we determine that it is
`appropriate to terminate the involvement of Össur. Moreover, in view of the
`early stage of this proceeding, and the concurrent settlement of the district
`court litigation, we determine that it also is appropriate to terminate the
`proceeding with respect to Otto Bock. As a result, it is appropriate to enter
`judgment in the form of termination and without rendering a final written
`decision. 37 C.F.R. § 42.72; see 37 C.F.R. § 42.2.
`
`
`In consideration of the foregoing, it is hereby:
`ORDERED that the parties’ Joint Motion to Terminate Proceedings is
`granted, and this proceeding is terminated as to all parties;
`FURTHER ORDERED that the parties’ joint requests that the
`settlement Agreement and the referenced Agreements (Exs. 2015-2017) be
`treated as business confidential information and be kept separate from the
`patent files, under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(c), are granted.
`
`
`
`3
`
`
`
`IPR2014-00145
`Patent 6,726,726 B2
`
`For PETITIONERS:
`
`Brenton R. Babcock
`Nicholas M. Zovko
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Tel.: (949) 760-0404
`Fax: (949) 760-9502
`BoxOssur@knobbe.com [FIRM EMAIL]
`
`For PATENT OWNER:
`
`Matthew I. Kreeger
`MORRISION & FOERSTER LLP
`425 Market Street
`San Francisco, California 94105-2482
`Tel.: (415) 268-7000
`mkreeger@mofo.com
`
`Walter Wu
`MORRISION & FOERSTER LLP
`755 Page Mill Road
`Palo Alto, CA 94304
`Tel.: (650) 813-5659
`ww@mofo.com
`
`
`
`
`
`
`
`
`4
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
