`
`Entered: November 5, 2015
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CERAMTEC GMBH,
`Petitioner,
`
`v.
`
`CERAMEDIC LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01504
`Patent 6,066,584
`____________
`
`Before GRACE KARAFFA OBERMANN, KRISTINA M. KALAN, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`TERMINATION
`Dismissing the Proceeding
`37 C.F.R. § 42.5(a), 37 C.F.R. § 42.71(a)
`
`
`
`
`
`
`
`
`IPR2015-01504
`Patent 6,066,584
`
`
`
`The parties have requested that the above-captioned proceeding be
`
`terminated pursuant to a settlement. The Board authorized the parties to file
`
`a joint motion to terminate or dismiss the above-captioned proceeding on
`
`October 29, 2015.
`
`On November 2, 2015, and pursuant to 35 U.S.C. § 317, the parties
`
`filed a joint motion to terminate or dismiss the above-captioned proceeding
`
`(Paper 15) and a joint request to treat the settlement agreement as business
`
`confidential information, to be kept separate from the patent file pursuant to
`
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (Paper 16), along with a copy
`
`of the settlement agreement (Ex. 1415).
`
`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). This case is in the
`
`preliminary proceeding stage. A preliminary proceeding begins with the
`
`filing of a petition for instituting a trial and ends with a written decision as to
`
`whether trial will be instituted. See 37 C.F.R. § 42.2. Petitioner filed a
`
`Petition on June 29, 2015. Paper 1. Patent Owner filed a Preliminary
`
`Response on October 19, 2015. Paper 13. No decision whether to institute a
`
`trial has been made.
`
`The parties jointly request that IPR2015-01504 be terminated or
`
`dismissed. Paper 15, 1, 5. The parties “certify that there are no collateral
`
`agreements or understandings made in connection with, or in contemplation
`
`of, the termination of IPR2015-01504.” Id. at 4. The parties represent that,
`
`pursuant to the settlement agreement, they have agreed to terminate not only
`
`the present proceeding but also the Delaware Action and the Third Circuit
`
`Appeal (as those terms are defined in the settlement agreement). Id. at 4.
`
`
`
`2
`
`
`
`IPR2015-01504
`Patent 6,066,584
`
`The parties also represent that IPR2015-01328, a case involving the same
`
`patent and same parties, will be allowed to proceed in its entirety. Id.
`
`Based on the facts of the case, and in view of the parties’ joint motion
`
`for termination or dismissal of this proceeding, we determine that it is
`
`appropriate to dismiss the Petition as to both Petitioner and Patent Owner
`
`without rendering either a decision to institute or a final written decision.
`
`See 37 C.F.R. §§ 42.5(a); 42.71(a). Therefore, the joint motion to terminate
`
`or dismiss and the joint request to treat the settlement agreement as business
`
`confidential information are granted. This paper does not constitute a final
`
`written decision pursuant to 35 U.S.C. § 318(a).
`
`Accordingly, it is
`
`
`
`ORDERED that the joint request to treat the settlement agreement as
`
`business confidential information, to be kept separate from the patent file, is
`
`granted;
`
`FURTHER ORDERED that the joint motion to terminate or dismiss
`
`the proceeding is granted; and
`
`FURTHER ORDERED that the Petition for Inter Partes Review of
`
`the above-referenced patent is dismissed.
`
`
`
`
`
`
`
`3
`
`
`
`IPR2015-01504
`Patent 6,066,584
`
`FOR PETITIONER:
`
`Gina Shishima
`gina.shishima@nortonrosefulbright.com
`
`Thomas Owens
`Tom.owens@nortonrosefulbright.com
`
`Mark Garrett
`Mark.garrett@nortonrosefulbright.com
`
`FOR PATENT OWNER:
`
`Kevin McNish
`kmcnish@desmaraisllp.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
