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Lee Specialties, Inc. v. FHE USA LLC

Docket IPR2019-01366, Patent Trial and Appeal Board (July 24, 2019)
Case TypeInter Partes Review
Patent
10030461
Patent Owner FHE USA LLC
Petitioner Lee Specialties, Inc.
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16 Termination Decision Document: Termination Order

Document IPR2019-01366, No. 16 Termination Decision Document - Termination Order (P.T.A.B. Feb. 18, 2020)
Petitioner, Lee Specialties, Inc., and Patent Owner, FHE USA LLC, jointly request to terminate IPR2019-01366 challenging U.S. Patent No. 10,030,461 B2 (“the ’461 patent”).
Along with the Motion, the parties filed what they represent is a true copy of their written settlement agreement.
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 patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” The Board generally expects that a case “will terminate after the filing of a settlement agreement, unless the Board has already decided the merits of the proceeding.” Patent Trial and Appeal Board Consolidated Trial Practice Guide 86 (Nov. 2019).1 In this case, the Board has instituted review but has not yet issued a final written decision.
The parties represent that they “have settled their dispute with respect to the ’461 Patent” and that “[t]here are no collateral agreements or understandings made in connection with, or in contemplation of, the termination of this proceeding.” Motion 2.
Accordingly, it is: ORDERED that the joint motion to terminate the proceeding is granted; and FURTHER ORDERED that this proceeding is terminated.
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14 Order: Scheduling Order

Document IPR2019-01366, No. 14 Order - Scheduling Order (P.T.A.B. Feb. 10, 2020)
For example, reasonable expenses and attorneys’ fees incurred by any party may be levied on a person who impedes, delays, or frustrates the fair examination of a witness.
To satisfy this requirement, Patent Owner should request a conference call with the Board no later than two weeks prior to DUE DATE 1.
Patent 10,030,461 B2 The parties are further directed to the Board’s Guidance on Motions to Amend in view of Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) and Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 15 (PTAB Feb. 25, 2019) (designated precedential).
Alternatively, the parties may jointly file a paper stating their preference for the hearing location within one month of this Order.
In stipulating to move any due dates in the scheduling order, the parties must be cognizant that the Board requires four weeks after the filing of an opposition to the motion to amend (or the due date for the opposition, if none is filed) for the Board to issue its preliminary guidance, if requested by Patent Owner.
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13 Institution Decision: Decision Granting Institution of Inter Partes Review

Document IPR2019-01366, No. 13 Institution Decision - Decision Granting Institution of Inter Partes Review (P.T.A.B. Feb. 10, 2020)

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11 Order: ORDER Conduct of the Proceeding 37 CFR ¿¿ 425

Document IPR2019-01366, No. 11 Order - ORDER Conduct of the Proceeding 37 CFR ¿¿ 425 (P.T.A.B. Jan. 21, 2020)

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7 Order Conduct of Proceeding: ORDER Conduct of the Proceeding 37 CFR ¿¿ 425

Document IPR2019-01366, No. 7 Order Conduct of Proceeding - ORDER Conduct of the Proceeding 37 CFR ¿¿ 425 (P.T.A.B. Nov. 21, 2019)

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3 Notice of Filing Date Accorded to Petition: Notice of Accord Filing Date

Document IPR2019-01366, No. 3 Notice of Filing Date Accorded to Petition - Notice of Accord Filing Date (P.T.A.B. Aug. 12, 2019)

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15 Motion: Joint Motion to Terminate Proceedings

Document IPR2019-01366, No. 15 Motion - Joint Motion to Terminate Proceedings (P.T.A.B. Feb. 17, 2020)

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