UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`EURAMAX INTERNATIONAL, INC.,
`Petitioner,
`
`v.
`
`INVISAFLOW, LLC,
`Patent Owner.
`_______________
`
`Case No. IPR2016-00423
`Patent 8,556,195
`________________
`
`Filed: June 16, 2016
`
`
`
`JOINT MOTION TO TERMINATE FOR SETTLEMENT
`PURSUANT TO 35 U.S.C. § 317
`
`
`
`
`
`
`
`
`
`
`
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`EURAMAX INTERNATIONAL, INC.,
`Petitioner,
`
`v.
`
`INVISAFLOW, LLC,
`Patent Owner.
`_______________
`
`Case No. IPR2016-00423
`Patent 8,556,195
`________________
`
`Filed: June 16, 2016
`
`
`
`JOINT MOTION TO TERMINATE FOR SETTLEMENT
`PURSUANT TO 35 U.S.C. § 317
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2016-00423
`Patent 8,556,195
`
`I.
`
`PRECISE RELIEF REQUESTED
`
`
`
`Petitioner Euramax International, Inc., and Patent Owner Invisaflow, LLC
`
`(collectively, “the Parties”), by and through their respective counsel, jointly request
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`termination of the above-captioned inter partes review proceeding of U.S. Patent
`
`No. 8,556,195 (“the ‘195 patent”) pursuant to 35 U.S.C. § 317(a), 37 C.F.R. §
`
`42.72, and 37 C.F.R. § 42.74. The parties have fully and finally resolved the
`
`dispute between them and entered into a Settlement Agreement effective May 31,
`
`2016 (“Agreement”) formally settling the dispute.
`
`
`
`On June 3, 2016, the Parties emailed the Board to request the Board’s
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`authorization to file a joint motion to terminate the above-captioned inter partes
`
`review proceeding. The Parties also sought the Board’s authorization to file with
`
`the motion to terminate a request to treat the written Agreement as business
`
`confidential information. On June 7, 2016, the Board authorized the Parties to file
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`both a motion to terminate and a request to treat the agreement as business
`
`confidential information.
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`II. REASONS FOR GRANTING THE MOTION
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`Generally, the Board expects that a proceeding will terminate after the filing
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`of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed.
`
`Reg. 48,756, 48,768 (Aug. 14, 2012). The Board authorized filing of the instant
`
`motion on June 7, 2016. Guidance as to the content of a motion to terminate is
`
`2
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`
`
`Case IPR2016-00423
`Patent 8,556,195
`
`provided in IPR2013-00428, Paper No. 56. There, the Board indicated that a joint
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`motion, such as this one, should (a) include a brief explanation as to why
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`termination is appropriate; (b) identify all parties in any related litigation involving
`
`the patent at issue; (c) identify any related proceedings currently before the Office;
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`and (d) discuss specifically the current status of each such related litigation or
`
`proceeding with respect to each party to the litigation or proceeding. Id. at 2. This
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`motion satisfies each of the above requirements and is accompanied by the
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`Agreement made in connection with termination of this proceeding, as required by
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`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74 (b).
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`A.
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`Brief Explanation of Why Termination is Appropriate
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`Termination is appropriate because this proceeding is in its very early stages:
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`Patent Owner has not filed its Response to the Petition or any Motion to Amend
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`the Claims, Petitioner has not filed its Reply to the Patent Owner’s Response, the
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`Parties have not filed motions to exclude, oral argument has not been held, the
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`Board has not decided the merits of the proceeding, and a final written decision has
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`not been issued. By virtue of the Agreement, the dispute between the Parties has
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`been resolved, including the Parties’ related litigation regarding the ‘195 patent:
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`Invisaflow, LLC v. Euramax International, Inc. et al., 1:14-cv-03026-MHC (N.D.
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`Ga). Per the Agreement, the Parties filed a Stipulation of Dismissal with Prejudice
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`of the related litigation on June 2, 2016 and the Court approved entry of the
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`3
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`
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`Case IPR2016-00423
`Patent 8,556,195
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`stipulated dismissal with prejudice on June 3, 2016. There are no other pending
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`cases involving the ‘195 patent.
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`B. All Parties in Any Pending Related Litigation Involving the
`Patent at Issue
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`In addition to Petitioner, Euramax Holdings, Inc. was named as a defendant
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`in the above-identified litigation. That litigation has been dismissed as to Euramax
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`Holdings, Inc. as well as to Petitioner. No future litigation amongst the Parties or
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`their affiliates involving the ‘195 patent is contemplated under the terms of the
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`Agreement.
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`C. Related Proceedings Currently Before the Office
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`There are no related proceedings pending before the Office.
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`D. Current Status of Each Such Related Litigation or Proceeding
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`With respect to each party in any related litigation or proceeding, Sections
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`II.B and II.C above indicate the status of each related litigation or proceeding with
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`respect to each party to the litigation or proceeding. The related litigation has been
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`dismissed with prejudice as to all parties and there are no related proceedings
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`before the Office.
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`III. AGREEMENT
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`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), the Agreement is
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`in writing, and a true and correct copy is being filed concurrently herewith as
`
`4
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`
`
`Case IPR2016-00423
`Patent 8,556,195
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`Exhibit A.1 The Parties are also filing concurrently herewith a joint request under
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`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) to treat the Agreement as business
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`confidential information to be kept separate from the file of the involved patents.
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`As stated in 35 U.S.C. § 317(a), because Petitioners and Patent Owner request this
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`termination as to Petitioner, no estoppel under 35 U.S.C. § 315(e) shall attach to
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`Petitioner or to a real party in interest or privy of the Petitioner.
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`IV. CONCLUSION
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`For all these reasons, the Parties respectfully request termination of the Inter
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`Partes Review of U.S. Patent No. 8,556,195, Case No. IPR2016-00423.
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`
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`
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`
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`Respectfully submitted, this 16th day of June, 2016.
`
`
`
`By: /Vaibhav P. Kadaba/
`
`Vaibhav P. Kadaba
`
`Reg. No. 45,865
`
`Lead Counsel for Petitioner
`
`By: /Andrew R. Shores/
`
`Andrew R. Shores
`
`Reg. No. 72,108
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`Back-up Counsel for Patent Owner
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`
`
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`1 The Agreement is being filed via the Patent Review Processing System (PRPS)
`with access to the “Parties and Board only.”
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`5
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`CERTIFICATE OF SERVICE
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`I hereby certify that on June 16, 2016, a copy of the foregoing document was
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`filed using the Patent Review Processing System, which will automatically send
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`email notification of such filing to the following attorneys of record.
`
`Richard T. Matthews
`Andrew R. Shores
`Williams Mullen, P.C.
`301 Fayetteville St., Suite 1700
`Raleigh, North Carolina 27601
`Telephone: 919-981-4000
`Fax: 919-981-4300
`Email: rmatthews@williamsmullen.com
`
`ashores@williamsmullen.com
`
`
`
`
`
`
` By: /Vaibhav P. Kadaba/
`Vaibhav P. Kadaba
`Reg. No. 45,865
`Lead Counsel for Petitioner
`
`
`
`
`
`
`
`Dated: June 16, 2016
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