`Entered: February 22, 2016
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ZIMMER BIOMET HOLDINGS, INC. and
`ZIMMER DENTAL INC.,
`Petitioner,
`
`v.
`
`FOUR MILE BAY, LLC,
`Patent Owner.
`_______________
`
`Case IPR2015-01059
`Patent 8,684,734 B1
`_______________
`
`
`
`Before BENJAMIN D. M. WOOD, RICHARD E. RICE, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`
`
`RICE, Administrative Patent Judge.
`
`DECISION
`Termination of the Proceeding
`35 U.S.C. § 317 and 37 C.F.R. § 42.72
`
`
`
`
`
`
`
`
`IPR2015-01059
`Patent 8,684,734 B1
`
`
`On February 19, 2016, the Parties filed a Joint Motion to Terminate
`Proceeding (Paper 15), jointly requesting based on a Settlement Agreement
`(Ex. 1015) that we terminate the instant inter partes review proceeding
`involving U.S. Patent No. 8,684,734 B1 (“the ’734 patent”). The panel
`authorized the filing of the Motion to Terminate via e-mail on February 16,
`2016. The Parties also filed a Joint Request to Treat Settlement Agreement
`as Business Confidential under 35 U.S.C § 317(b) and 37 C.F.R. § 42.74(c).
`Paper 16.
`The Parties state in support of their Motion to Terminate:
`Termination of this proceeding is appropriate because a
`final written decision has not been reached and the Parties will
`no longer be participating in this proceeding. The Parties have
`settled their disputes and executed a settlement agreement to
`terminate the IPR proceedings involving the ’734 patent
`(IPR2015-0l058, -1059), as well as the district court litigation
`involving the ’734 patent: Four Mile Bay LLC v. Zimmer
`Holdings, Inc. et al., Civil Action No. 3:14-CV-1300 (NB)-
`(JEM) (N.D. Ind.). The Parties filed a stipulation of dismissal in
`the related district court action on February 11, 2016.
`
`
`Paper 15, 2.
`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.”
`Furthermore, under 35 U.S.C. § 317(a), “[i]f no petitioner remains in the
`inter partes review, the Office may terminate the review or proceed to a
`final written decision under section 318(a).” Generally, the Board expects
`that a proceeding will terminate after the filing of a settlement agreement.
`
`2
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`
`
`IPR2015-01059
`Patent 8,684,734 B1
`
`See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768
`(Aug. 14, 2012).
`In this case, the proceeding is at a relatively-early stage, and the
`Parties have filed with the Board a true copy of their Settlement Agreement
`agreeing to terminate the proceeding.
`Upon consideration of the circumstances of this case, the panel has
`determined that termination of this inter partes review is appropriate without
`rendering a final written decision.
`Accordingly, it is:
`ORDERED that the Parties’ Request to Treat Settlement Agreement
`as Business Confidential (Paper 16) is hereby granted;
`FURTHER ORDERED that the Parties’ Settlement Agreement
`(Ex. 1015) shall be treated as business confidential information under
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c);
`FURTHER ORDERED that the Parties’ Motion to Terminate
`(Paper 15) is hereby granted; and
`FURTHER ORDERED that this proceeding is hereby terminated.
`
`
`
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`3
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`4
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`IPR2015-01059
`Patent 8,684,734 B1
`
`
`
`PETITIONER:
`Naveen Modi
`Paromita Chatterjee
`Srikala P. Atluri
`Paul Hastings LLP
`naveenmodi@paulhastings.com
`mitachatterjee@paulhastings.com
`srikalaatluri@paulhastings.com
`
`PATENT OWNER:
`Patrick Richards
`Richards Patent Law P.C.
`patrick@richardspatentlaw.com