`Tel: 571-272-7822
`
`Paper 11
`Entered: June 8, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`EURAMAX INTERNATIONAL, INC.,
`Petitioner,
`
`v.
`
`INVISAFLOW, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00423
`Patent 8,556,195 B1
`_______________
`
`
`
`Before SALLY C. MEDLEY, LYNNE E. PETTIGREW, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`WIEKER, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`Case IPR2016-00423
`Patent 8,556,195 B1
`
`Petitioner filed a petition for inter partes review of U.S. Patent No.
`8,556,195 B1 and Patent Owner filed a preliminary response. Papers 1, 7.
`On June 1, 2016, we instituted trial. Paper 9.
`On June 3, 2016, the parties informed the Board that the parties have
`reached a settlement agreement. The parties seek authorization from the
`Board to file a joint motion to terminate the proceeding pursuant to
`35 U.S.C. § 317(a), and to treat the parties’ written settlement agreement as
`business confidential information.
`An inter partes review has been instituted in this case. The Board
`does not have before it full briefing on the issues raised during the trial.
`Moreover, the Board has not entered a final written decision. 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.
`48,756, 48,768 (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 proceeding 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 file
`a joint motion to terminate the proceeding, briefly explaining why
`termination is appropriate. The joint motion should update the Board as to
`the status of any other matters involving the patent at issue. The parties also
`must file, as an exhibit, a true copy of their settlement agreement to
`terminate the proceeding. A redacted version of the settlement agreement
`will not be accepted as a true copy of the settlement agreement. 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
`
`2
`
`
`
`Case IPR2016-00423
`Patent 8,556,195 B1
`
`settlement agreement. 37 C.F.R. § 42.74(c). The parties are directed to
`FAQ G2 on the Board’s website
`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 no later than June 17, 2016.
`
`Accordingly, it is:
`ORDERED that the parties are authorized to file a joint motion to
`terminate the proceeding;
`FURTHER ORDERED that the joint motion is due no later than June
`17, 2016;
`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);
`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”); and
`FURTHER ORDERED that the remaining DUE DATES in the
`proceeding are vacated.
`
`
`3
`
`
`
`Case IPR2016-00423
`Patent 8,556,195 B1
`
`PETITIONER:
`
`Wab Kadaba
`wkadaba@kilpatricktownsend.com
`
`Renae Wainwright
`rwainwright@kilpatricktownsend.com
`
`
`
`PATENT OWNER:
`
`Richard Matthews
`rmatthews@williamsmullen.com
`
`Andrew Shores
`ashores@williamsmullen.com
`
`
`4
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