`571-272-7822
`
`Paper 12
`
`Entered: August 21, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`OBALON THERAPEUTICS, INC.,
`Petitioner,
`
`v.
`
`POLYZEN, INC.,
`Patent Owner.
`____________
`
`Cases IPR2017-00812 (Patent 7,682,306 B2)1
`IPR2017-00813 (Patent 7,883,491 B2)
`IPR2017-01023 (Patent 6,712,832 B2)
`____________
`
`Before KRISTINA M. KALAN, JON B. TORNQUIST, and
`CHRISTOPHER M. KAISER, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`
`DECISION
`Dismissing the Proceedings
`37 C.F.R. § 42.5(a), 37 C.F.R. § 42.71(a)
`
`
`
`
`
`1 This Decision addresses the same issues in each of three related cases. We
`exercise our discretion to issue one Decision to be entered in each case. The
`parties are not authorized to use this style heading in their papers.
`
`
`
`IPR2017-00812 (Patent 7,682,306 B2)
`IPR2017-00813 (Patent 7,883,491 B2)
`IPR2017-01023 (Patent 6,712,832 B2)
`
`The parties have requested that the above-captioned proceedings be
`
`terminated pursuant to a settlement. The Board authorized the parties to file
`a joint motion to terminate or dismiss the above-captioned proceedings on
`August 18, 2017.
`On August 18, 2017, and pursuant to 35 U.S.C. § 317, the parties filed
`a joint motion to terminate in each of the above-captioned proceedings
`(IPR2017-00812, Paper 10; IPR2017-00813, Paper 10; IPR2017-01023,
`Paper 11) and a joint request to treat the settlement agreements 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) (IPR2017-00812, Paper 11;
`IPR2017-00813, Paper 11; IPR2017-01023, Paper 12), along with a copy of
`the settlement agreements (IPR2017-00812, Exs. 1013, 1014; IPR2017-
`00813, Exs. 1010, 1011; IPR2017-01023, Exs. 1018, 1019).
`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). These cases are 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. In each of the above-
`captioned proceedings, Petitioner filed a Petition, and Patent Owner filed a
`Preliminary Response, but no decision whether to institute a trial has been
`made.
`The parties jointly request that IPR2017-00812, IPR2017-00813, and
`IPR2017-01023 be terminated. IPR2017-00812, Paper 10, 1; IPR2017-
`00813, Paper 10, 1; IPR2017-01023, Paper 11, 1. In each case, the parties
`
`
`
`2
`
`
`
`IPR2017-00812 (Patent 7,682,306 B2)
`IPR2017-00813 (Patent 7,883,491 B2)
`IPR2017-01023 (Patent 6,712,832 B2)
`
`“certify that there are no collateral agreements or understandings made in
`connection with, or in contemplation of, the termination of this inter partes
`review” and that the “Settlement and License Agreement and Inter Partes
`Review Proceedings Settlement Agreement reflect the final settlement and
`resolution of all disputes between Patent Owner and Petitioner regarding this
`inter partes review.” Id. at 2. The parties represent that, pursuant to the
`settlement agreements, they have agreed to terminate not only the present
`proceedings but also the related district court litigation in the United States
`District Court for the Southern District of California. Id. at 1.
`Based on the facts of these cases, and in view of the parties’ joint
`motions in these proceedings, we determine that it is appropriate to dismiss
`the Petitions in each of the above-captioned cases 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
`motions and the joint requests to treat the settlement agreements 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, in each of the above-captioned proceedings, the joint
`
`request to treat the settlement agreements as business confidential
`information, to be kept separate from the patent file, is granted;
`FURTHER ORDERED that the joint motion filed in each of the
`above-captioned proceedings is granted; and
`FURTHER ORDERED that the Petitions for Inter Partes Review of
`each of the above-referenced patents are dismissed.
`
`
`
`3
`
`
`
`IPR2017-00812 (Patent 7,682,306 B2)
`IPR2017-00813 (Patent 7,883,491 B2)
`IPR2017-01023 (Patent 6,712,832 B2)
`
`
`
`FOR PETITIONER:
`
`Peng Chen
`Desmond O’Sullivan
`MORRISON & FOERSTER LLP
`pchen@mofo.com
`dosullivan@mofo.com
`
`
`
`FOR PATENT OWNER:
`
`Steven Hultquist
`Mary Grant
`HULTQUIST IP
`hultquist@hultquistip.com
`mgrant@hultquistip.com
`
`
`
`
`
`
`4
`
`