UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`
`
`
`
`HYDRITE CHEMICAL CO.
`Petitioner,
`
`v.
`
`SOLENIS TECHNOLOGIES, L.P.,
`Patent Owner.
`______________
`
`IPR2015-01592
`Patent 8,962,059
`______________
`
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317
`
`
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`
`
`
`
`HYDRITE CHEMICAL CO.
`Petitioner,
`
`v.
`
`SOLENIS TECHNOLOGIES, L.P.,
`Patent Owner.
`______________
`
`IPR2015-01592
`Patent 8,962,059
`______________
`
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317
`
`
`
`Pursuant to 35 U.S.C. § 317(a), Patent Owner, Solenis Technologies, L.P.
`
`(“Solenis”), and Petitioner, Hydrite Chemical Co. (“Hydrite”), jointly request
`
`termination of the Inter Partes Review of U.S. Patent No. 8,962,059 (“the 059
`
`Patent”), Case No. IPR2015-01592.
`
`The Parties have reached a settlement agreement regarding their disputes
`
`relating to the 059 Patent. This settlement addresses both this IPR and related,
`
`copending litigation, i.e., Hydrite Chemical Co. v. Solenis Technologies, L.P. et al.,
`
`2-15-cv-00856, Eastern District of Wisconsin. The settlement agreement has been
`
`made in writing, and a true and correct copy of it is being filed concurrently with a
`
`joint request that the settlement agreement be treated as business confidential
`
`information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`
`The 059 Patent was the subject of litigation in the Western District of
`
`Tennessee: Buckman Laboratories, Inc. v. Solenis, LLC et al., 2-15-cv-02063,
`
`filed January 13, 2015. Buckman Laboratories, Inc. was the declaratory judgment
`
`plaintiff. A judgment dismissing this litigation was entered on May 31, 2016. No
`
`other litigations or proceedings are pending which involve the 059 Patent.
`
`Because there is no longer a controversy between the Parties (or any other
`
`party) involving the 059 Patent and because the Board has not yet decided this IPR
`
`on its merits, termination of these proceedings without rendering a final written
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`decision is appropriate.
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`- 2 -
`
`
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`Not terminating this proceeding would discourage settlement of concurrent
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`district court and Patent Office proceedings, waste judicial resources and be
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`contrary to federal judicial preference for settlement. Both Congress and the
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`Federal Courts have expressed a strong interest in encouraging settlement in
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`litigation. Flex-Foot, Inc. v. CRP, Inc., 238 F.3d 1362, 1369 (Fed. Cir. 2001)
`
`(“[T]here is a strong public interest in settlement of patent litigation”); Bergh v.
`
`Dep’t. of Transp., 794 F.2d 1575, 1577 (Fed. Cir. 1986) (“The law favors
`
`settlement of cases.”), cert denied, 479 U.S. 950 (1986). Maintaining this IPR
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`after the parties’ settlement would discourage future settlement by removing a
`
`primary motivation for settlement: eliminating litigation risk by resolving the
`
`parties’ dispute and ending pending proceedings between them. For example, if a
`
`patent owner knows that an IPR is likely to continue regardless of settlement, the
`
`patent owner has a strong disincentive to settle. Moreover, in the event the Board
`
`finds certain challenged claims unpatentable, an appeal would take up valuable
`
`judicial and/or administrative resources. This is particularly true given that,
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`without Hydrite as a party, the Office would need to intervene in the appeal to
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`present any defense of the Board’s decision.
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`Accordingly, the Office Patent Trial Practice Guide not only notes that
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`“[t]here are strong public policy reasons to favor settlement between the parties to
`
`a proceeding” but also states that it is the expectation of the Board “that a
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`- 3 -
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`
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`proceeding will terminate after the filing of a settlement agreement, unless the
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`Board has already decided the merits of the proceeding.” Office Patent Trial
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`Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). See also, Clio USA
`
`Inc. v. The Procter & Gamble Co., IPR2013-00438, Paper 57 (Oct. 31, 2014)
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`(terminating proceedings in view of settlement after oral argument); Volusion Inc.
`
`v. Versata Software Inc., CBM2013-00018, Paper 52 (June 17, 2014) (terminating
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`proceedings in view of settlement after oral argument even though there was a
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`pending district court case between the patent owner and a third party regarding the
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`challenged patent).
`
`Therefore, Solenis and Hydrite respectfully request termination of the Inter
`
`Partes Review of the 059 Patent, Case No. IPR2015-01592.
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`Respectfully submitted,
`
`Dated: November 21, 2016
`
`/Joseph Lucci/
`Joseph Lucci (Reg. No. 33,307)
`BAKER & HOSTETLER LLP
`Cira Centre, 12th Floor
`2929 Arch Street
`Philadelphia, PA 19104
`
`Attorney for Patent Owner
`Solenis Technologies, L.P.
`
`- 4 -
`
`/Richard T. Roche/
`Richard T. Roche (Reg. No. 38,599)
`QUARLES & BRADY, LLP
`411 East Wisconsin Avenue
`Milwaukee, WI 53202-4497
`
`
`
`Attorney for Petitioner
`Hydrite Chemical Co.
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`I, David N. Farsiou, hereby certify that on this 21st day of November, the
`
`foregoing JOINT MOTION TO TERMINATE PROCEEDING PURSUANT TO
`
`35 U.S.C. § 317 was served electronically via e-mail on the following:
`
`Richard T. Roche
`Joel A. Austin
`Christopher J. Fahy
`QUARLES & BRADY, LLP
`411 East Wisconsin Avenue
`Suite 2350
`Milwaukee, WI 53202
`richard.roche@quarles.com
`joel.austin@quarles.com
`christopher.fahy@quarles.com
`
`
`/David N. Farsiou/
`David N. Farsiou
`Reg. No. 44,104
`BAKER & HOSTETLER LLP
`Cira Centre, 12th Floor
`2929 Arch Street
`Philadelphia, PA 19104
`
`Attorney for Patent Owner
`
`- 5 -
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