`571-272-7822
`
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`
`
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` Paper: 13
`
`
`
` Entered: December 8, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CIM MAINTENANCE INC.,
`Petitioner,
`
`v.
`
`P&RO SOLUTIONS GROUP, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00516
`Patent 8,209,205 B1
`____________
`
`
`
`Before PHILLIP J. KAUFFMAN, KEVIN W. CHERRY, and
`ELIZABETH M. ROESEL, Administrative Patent Judges.
`
`ROESEL, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Joint Motion to Terminate
`35 U.S.C. § 317(a) and 37 C.F.R. §§ 42.72, 42.74
`
`
`
`
`IPR2017-00516
`Patent 8,209,205 B1
`
`
`On June 22, 2017, we instituted inter partes review. Paper 8. With
`the Board’s prior authorization, on November 17, 2017 and pursuant to 35
`U.S.C. § 317(a), the parties filed a joint motion to terminate the inter partes
`review based upon a written agreement between the parties resolving their
`dispute regarding U.S. Patent No. 8,209,205 (“the ’205 Patent”). Paper 11.
`The parties concurrently filed a copy of their written agreement (Ex. 2004)
`and a request that the agreement be treated as business confidential
`information, be kept separate from the patent files, and be made available
`only as permitted under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`Paper 12.
`The parties represent that, in the related district court litigation, the
`’205 Patent was held invalid under 35 U.S.C. § 101 on March 31, 2017, the
`lawsuit was dismissed, and a final judgment has been entered. Paper 11, 2–3
`(citing P&RO Solutions Group, Inc. v. CiM Maintenance Inc., No. 6:16-cv-
`00095-RWS (E.D. Tex.)). The parties represent that Petitioner and Patent
`Owner are the only parties in the related district court litigation and that
`there are no other pending litigations between the parties. Id. The parties
`also represent that there are currently no other proceedings before the Office
`concerning the ’205 Patent or involving both Petitioner and Patent Owner.
`The parties represent that their written agreement includes Patent
`Owner’s agreement not to sue Petitioner for infringement of the ’205 Patent
`and not to appeal the final judgment of the district court in the related district
`court litigation in exchange for Petitioner’s agreement to move to terminate
`this inter partes review. Id. at 3. The parties further represent that “the
`written covenant not to sue between the parties settles all material disputes
`related to the ’205 Patent between the parties.” Id.
`
`2
`
`
`
`IPR2017-00516
`Patent 8,209,205 B1
`
`
`Section 317 of Title 35 provides in relevant part:
`An inter partes review instituted under this chapter shall
`be terminated with respect to any petitioner upon the joint request
`of the petitioner and the patent owner, unless the Office has
`decided the merits of the proceeding before the request for
`termination is filed.
`35 U.S.C. § 317(a).
`Any agreement or understanding between the patent
`owner and a petitioner, including any collateral agreements
`referred to in such agreement or understanding, made in
`connection with, or in contemplation of, the termination of an
`inter partes review under this section shall be in writing and a
`true copy of such agreement or understanding shall be filed in
`the Office before the termination of the inter partes review as
`between the parties.
`35 U.S.C. § 317(b).
`In this case, the Board has not yet decided the merits of the inter
`partes review. Based on the parties’ representations and our review of the
`parties’ written agreement (Ex. 2004), we determine that the above-quoted
`requirements of 35 U.S.C. § 317(b) are satisfied. Under these
`circumstances, and in view of the final judgment in the related district court
`litigation and the parties’ representations as set forth above, we determine
`that it is appropriate to terminate this proceeding pursuant to 35 U.S.C.
`§ 317(a) and 37 C.F.R. § 42.72. Therefore, the joint motion to terminate this
`proceeding is granted. This paper does not constitute a final written decision
`pursuant to 35 U.S.C. § 318(a).
`We also determine that it is appropriate that the parties’ written
`agreement (Ex. 2004) be treated as business confidential information and be
`kept separate from the patent files pursuant to 35 U.S.C. § 317(b) and 37
`C.F.R. § 42.74(c).
`
`3
`
`
`
`IPR2017-00516
`Patent 8,209,205 B1
`
`
`ORDER
`
`Accordingly, it is:
`ORDERED that the parties’ joint request that their written agreement
`(Ex. 2004) be treated as business confidential information and kept separate
`from the patent files, is granted; and
`FURTHER ORDERED that the joint motion to terminate IPR2017-
`00516 is granted, and the proceeding is terminated.
`
`
`
`4
`
`
`
`IPR2017-00516
`Patent 8,209,205 B1
`
`PETITIONER:
`Abran J. Kean
`Eric A. Buresh
`ERISE IP, P.A.
`abran.kean@eriseip.com
`eric.buresh@eriseip.com
`
`PATENT OWNER:
`Michael C. Greenbaum
`Daniel Cardy
`Ameya V. Paradkar
`BLANK ROME LLP
`Greenbaum@BlankRome.com
`DCardy@BlankRome.com
`AParadkar@BlankRome.com
`
`5
`
`
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