`Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 12
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` Entered: June 3, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`EDWARDS LIFESCIENCES CORPORATION
`Petitioner
`v.
`MEDTRONIC, INC.
`Patent Owner
`____________________
`
`Case IPR2014-00362
`Patent 6,306,141 B1
`___________________
`
`Before SALLY C. MEDLEY and STEPHEN C. SIU,
`Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
` 37 C.F.R. § 42.5
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`Petitioner filed a petition for inter partes review on January 17, 2014
`and a corrected petition on May 12, 2014. Patent Owner filed a preliminary
`response on April 29, 2014. On May 30, 2014, the parties informed the
`Board that the parties have reached a settlement agreement and that the
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`Case IPR2014-00362
`Patent 6,306,141 B1
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`parties seek authorization from the Board to file a joint motion to terminate
`the proceeding and to file the settlement agreement as business confidential
`information.
`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 are 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”).
`The joint motion to terminate and the settlement agreement shall be
`filed by Monday, June 9, 2014.
`Accordingly, it is
`ORDERED that the parties are authorized to file a joint motion to
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`1 A “proceeding” includes a preliminary proceeding. 37 C.F.R. § 42.2.
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`2
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`Case IPR2014-00362
`Patent 6,306,141 B1
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`terminate the proceeding;
`FURTHER ORDERED that the joint motion is due June 9, 2014; 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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`PETITIONER:
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`David S. Moreland
`Gregory Carlin
`MEUNIER CARLIN & CURFMAN, LLC
`dmoreland@mcciplaw.com
`gcarlin@mcciplaw.com
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`PATENT OWNER:
`
`John J. Molenda
`Sharon A. Israel
`Evan Finkel
`MAYER BROWN LLP
`jmolenda@mayerbrown.com
`sisrael@mayerbrown.com
`
`3
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