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`
`
`
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` Paper 9
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`
` Entered: January 5, 2015
`
`
`Trial@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`LAROSE INDUSTRIES, LLC,
`Petitioner,
`
`v.
`
`CHOON’S DESIGN INC.,
`Patent Owner.
`_______________
`
`Case IPR2014-01353
`Patent 8,485,565 B2
`_______________
`
`
`Before GRACE KARAFFA OBERMANN, JEREMY M. PLENZLER, and
`JON B. TORNQUIST, Administrative Patent Judges.
`
`
`PLENZLER, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Termination of Proceeding
`37 C.F.R. § 42.73
`
`
`
`
`
`
`
`IPR2014-01353
`Patent 8,485,565 B2
`
`
`On December 31, 2014, Petitioner LaRose Industries, LLC
`
`(“LaRose”) and Patent Owner Choon’s Design Inc. (“Choon’s”) filed a Joint
`
`Motion to Terminate the instant proceeding. Paper 7. The parties also filed
`
`a true copy of their Written Settlement Agreement, made in connection with
`
`the termination of this proceeding, in accordance with 35 U.S.C. § 317(b)
`
`and 37 C.F.R. § 42.74(b). Paper 8, 4–20.1 Additionally, the parties
`
`submitted a Joint Request to treat the Written Settlement Agreement as
`
`business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R.
`
`§ 42.74(c). Id. at 1.
`
`As an initial matter, the Board authorized the parties to file the Joint
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`Motion to Terminate, and granted the parties’ request for extending the time
`
`for filing the Joint Motion to Terminate, from December 19, 2014, to
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`December 30, 1014 (“the Revised Due Date”), in light of the unavailability
`
`of Patent Review Processing System (“PRPS”) for two and a half days, and
`
`the holidays. Paper 6; Exhibit 3001.2 The parties’ Joint Motion to
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`Terminate, however, was filed a day later than the Revised Due Date.
`
`A late action will be excused either on a showing of good cause or
`
`upon a Board decision that consideration on the merits would be in the
`
`interests of justice. 37 C.F.R. § 42.5(c)(3). The parties should have notified
`
`
`1 The parties are reminded that the Written Settlement Agreement should
`have been filed separately as an exhibit. See 37 C.F.R. § 42.6(a)(3)
`(“[C]ombined documents are not permitted.”).
`2 The e-mail communication regarding the parties’ request for an extension
`of time is entered as Exhibit 3001.
`
`
`
`2
`
`
`
`IPR2014-01353
`Patent 8,485,565 B2
`
`the Board of the late filing or sought prior authorization for a one-day
`
`extension of time. Nevertheless, upon weighing the impact of the late filing
`
`on the instant proceeding against the prejudice to the parties of not
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`considering the Joint Motion to Terminate, we determine that it would be in
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`the interests of justice, under the present circumstances, to excuse the
`
`parties’ late action.
`
`Generally, 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 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). LaRose filed a
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`Petition for inter partes review of U.S. Patent No. 8,485,565 B2 (Ex. 1001,
`
`“the ’565 patent”) on August 20, 2014. Paper 1. In response, Choon’s
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`timely filed a Patent Owner Preliminary Response on December 2, 2014.
`
`Paper 5. The Board, however, has not determined, under 35 U.S.C. § 314,
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`whether to institute inter partes review as to the ’565 patent. As no trial has
`
`been instituted based on LaRose’s Petition, this proceeding is in the
`
`preliminary proceeding3 stage. Given the particular facts in the instant
`
`proceeding, we conclude that it is appropriate to enter judgment.4
`
`
`3 A preliminary proceeding begins with the filing of a petition for instituting
`a trial and ends with a written decision as to whether a trial will be instituted.
` 37 C.F.R. § 42.2.
`4 A judgment means a final written decision by the Board, or a termination
`of a proceeding. 37 C.F.R. § 42.2.
`
`
`
`3
`
`
`
`IPR2014-01353
`Patent 8,485,565 B2
`
`
`Accordingly, it is
`
`ORDERED that the Joint Motion to Terminate the instant proceeding
`
`is granted;
`
`FURTHER ORDERED that the instant proceeding is terminated as to
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`all parties; and
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`FURTHER ORDERED that the Joint Request that the Written
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`Settlement Agreement be treated as business confidential information kept
`
`separate from the patent file, and made available only to Federal
`
`Government agencies on written request, or to any person on a showing of
`
`good cause, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is
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`granted.
`
`
`
`
`
`
`
`4
`
`
`
`IPR2014-01353
`Patent 8,485,565 B2
`
`For PETITIONER:
`
`Ralph W. Selitto, Jr.
`John K. Kim
`Joseph Agostino
`GREENBERG TRAURIG, LLP
`selittor@gtlaw.com
`kimjo@gtlaw.com
`agostinoj@gtlaw.com
`
`
`For PATENT OWNER:
`
`John M. Siragusa
`Theodore Olds
`Anthony P. Cho
`CARLSON, GRASKEY & OLDS, P.C.
`jsiragusa@cgolaw.com
`tolds@cgolaw.com
`acho@cgolaw.com
`
`
`
`
`
`
`
`5
`
`
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