`Tel: 571-272-7822
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`Paper 9
`Entered: March 17, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`FIFTH THIRD BANK
`Petitioner
`
`v.
`
`LEON STAMBLER
`Patent Owner
`_______________
`
`Case IPR2014-00244
`U.S. Patent 5,793,302
`_______________
`
`
`Before THOMAS L. GIANNETTI, BRYAN F. MOORE, and TRENTON A.
`WARD, Administrative Patent Judges.
`
`WARD, Administrative Patent Judge.
`
`
`ORDER
`Motion to Terminate
`37 C.F.R. § 42.72
`
`
`
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`
`
`
`
`IPR2014-00244
`Patent 5,793,302
`
`
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`On March 10, 2014, the parties filed a joint motion to terminate the trial
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`proceedings under 35 U.S.C. § 317(a). Along with the motion, the parties filed a
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`copy of a document they described as the written settlement agreement, as well as
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`a separate joint request to treat the settlement agreement as business confidential
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`information under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`
`Paper 8, 1.
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`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this
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`chapter shall be terminated with respect to any petitioner upon the joint request of
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`the petitioner and patent owner, unless the Office has decided the merits of the
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`proceeding before the request for termination is filed.” The parties stated in their
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`motions that they “have reached a settlement regarding their dispute and have
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`agreed to terminate the IPR Proceeding.” Paper 8, 1. Furthermore, a trial has not
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`been instituted in this proceeding.
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`The joint motion indicates that on March 6, 2014, the Patent Owner filed a
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`motion to dismiss the related district court litigation between the parties involving
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`the patent at issue in this proceeding, U.S. Patent No. 5,793,302. Paper 8, 3.
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`Furthermore, the joint motion indicates that all other related litigation matters
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`identified in the Patent Owner’s Mandatory Notices (Paper 6) have been dismissed.
`
`Id.
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`The parties are reminded that the Board is not a party to the settlement, and
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`may independently identify any question of patentability. 37 C.F.R § 42.74(a).
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`Generally, however, the Board expects that a proceeding will terminate after the
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`filing of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77
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`Fed. Reg. 48756, 48768 (Aug. 14, 2012). These proceedings are still in the
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`preliminary stages, as the Board has not instituted a trial. The Board is persuaded
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` 2
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`IPR2014-00244
`Patent 5,793,302
`
`that, under these circumstances, it is appropriate to terminate this proceeding
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`without rendering a final written decision. 37 C.F.R. § 42.72.
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`Accordingly, it is:
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`ORDERED that the joint motion to terminate this proceeding is GRANTED
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`and this proceeding is hereby terminated;
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`FURTHER ORDERED that the parties’ joint request that the settlement
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`agreement (Ex. 1019) be treated as business confidential information, kept separate
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`from the file of the involved patent, and made available only to Federal
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`Government agencies on written request, or to any person on a showing of good
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`cause, under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is
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`GRANTED.
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`
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` 3
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`IPR2014-00244
`Patent 5,793,302
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`
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`PETITIONER:
`
`Edward J. Benz
`PAUL HASTINGS
`joebenz@paulhastings.com
`
`
`PATENT OWNER:
`
`Robert P. Greenspoon
`Joseph C. Drish
`FLACHSBART & GREENSPOON, LLC
`rpg@fg-law.com
`jcd@fg-law.com
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` 4
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