`Trials@uspto.gov
`571-272-7822 Entered: September 27, 2019
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`COOK INC., COOK GROUP INC., and COOK MEDICAL LLC,
`Petitioner,
`
`v.
`
`MEDTRONIC, INC.,
`Patent Owner.
`____________
`
`Case IPR2019-00123
`Patent 6,306,141 B1
`____________
`
`
`
`Before JAMESON LEE, KEN B. BARRETT, and JAMES A. TARTAL,
`Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`
`
`
`TERMINATION
`Due to Settlement After Institution of Trial
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`
`IPR2019-00123
`Patent 6,306,141 B1
`
`Petitioner and Patent Owner (collectively, “the parties”) have
`
`requested that the above-identified proceeding be terminated pursuant to a
`settlement. The Board authorized the parties to file a joint motion to
`terminate the proceeding on September 17, 2019.
`
`On September 25, 2019, and pursuant to 35 U.S.C. § 317(a), the
`parties filed a Joint Motion to Terminate this proceeding (“Joint Motion to
`Terminate”) (Paper 16) and a Joint Request to file the settlement agreement
`as business confidential information and to be kept separate from the patent
`file pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (“Joint
`Request”) (Paper 17), along with a copy of the written settlement agreement
`(Ex. 10351).
`
`Under 35 U.S.C. § 317(a), “[a]n 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.” It is
`also provided in 35 U.S.C. § 317(a) that, if no petitioner remains in the inter
`partes review, the Office may terminate the review.
`
`Additionally, 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). We instituted trial in
`this proceeding. Paper 11 (dated June 11, 2019). Thus, this proceeding is a
`trial subject to termination under 37 C.F.R. § 42.72. See 37 C.F.R. §42.72.
`
`
`1 The parties initially filed the settlement agreement as a paper rather than as
`an exhibit. On September 26, 2019, the parties filed, at the Board’s request,
`the settlement agreement as an exhibit. The Board subsequently expunged
`the version initially filed as a paper.
`
`2
`
`
`
`IPR2019-00123
`Patent 6,306,141 B1
`
`We have not decided yet the merits of this proceeding, and a final written
`decision has not been entered in this proceeding. Notwithstanding that this
`proceeding has moved beyond the preliminary stage, the parties have shown
`adequately that the termination of this proceeding is appropriate. Under
`these circumstances, we determine that good cause exists to terminate this
`proceeding with respect to the parties.
`
`The parties represent that Exhibit 1035 is a true and correct copy of
`the settlement agreement between the parties. Paper 16, 1. The parties state
`that they “further represent that there are no other agreements, oral or
`written, between the parties made in connection with, or in contemplation of,
`the termination of this proceeding.” Id.
`
`Based on the facts of these proceedings, and in view of the parties’
`Joint Motion to Terminate, we are persuaded that it is appropriate to
`terminate this proceeding with respect to both Petitioner and Patent Owner
`without rendering any further decisions. See 37 C.F.R. §§ 42.5(a), 42.72.
`Therefore, the Joint Motion to Terminate and the Joint Request to treat the
`settlement agreement as business confidential information are granted.
`
`This Order does not constitute a final written decision pursuant to
`35 U.S.C. § 318(a).
`
`Accordingly, it is
`
`ORDERED that the Joint Request that the settlement agreement
`(Ex. 1035) be treated as business confidential information and be kept
`separate from the files of the involved patent under the provisions of 35
`U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is granted;
`
`FURTHER ORDERED that the Joint Motion to Terminate this
`proceeding is granted; and
`
`3
`
`
`
`IPR2019-00123
`Patent 6,306,141 B1
`
`FURTHER ORDERED that this proceeding is terminated with respect
`
`to both Petitioner and Patent Owner pursuant to 35 U.S.C. § 317(a) and
`37 C.F.R. § 42.72.
`
`
`
`
`4
`
`
`
`IPR2019-00123
`Patent 6,306,141 B1
`
`For PETITIONER:
`Dominic P. Zanfardino
`Jeff M. Nichols
`Jason W. Schigelone
`BRINKS GILSON & LIONE
`dpz@brinksgilson.com
`jnichols@brinksgilson.com
`jschigelone@brinksgilson.com
`For PATENT OWNER:
`James L. Davis, Jr.
`Andrew Thomases
`Gabrielle E. Higgins
`ROPES & GRAY LLP
`james.l.davis@ropesgray.com
`andrew.thomases@ropesgray.com
`gabrielle.higgins@ropesgray.com
`
`
`
`
`
`
`
`5
`
`
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