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Prolime Agricultural, LLC v. Sul4r-Plus, LLC

Docket IPR2024-00236, Patent Trial and Appeal Board (Nov. 28, 2023)
Donna Praiss, Elizabeth Roesel, Julia Heaney, presiding
Case TypeInter Partes Review
Patent9873638
Patent Owner Sul4r-Plus, LLC
Petitioner Prolime Agricultural, LLC
Assignee CHARAH, LLC (FORMERLY KNOWN AS CHARAH, INC.)
...
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23 Notice refund approved: Notice refund approved

Document IPR2024-00236, No. 23 Notice refund approved - Notice refund approved (P.T.A.B. Jun. 20, 2024)
Petitioner’s request for a refund of certain post-institution fees paid on November 28, 2023 in the above proceeding is hereby granted.
The amount of $24,750.00 has been refunded to Petitioner’s deposit account.
The parties are reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in the Patent Trial and Appeal Board PTACTS System, accessible from the Board Web site at http://www.uspto.gov/PTAB.
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21 Termination Decision Pre DI settlement: Termination Decision Pre DI settlement

Document IPR2024-00236, No. 21 Termination Decision Pre DI settlement - Termination Decision Pre DI settlement (P.T.A.B. Jun. 12, 2024)
On June 10, 2024, with the Board’s authorization, Prolime Agricultural, LLC and Caudill Seed and Warehouse Co., Inc. (“Petitioner”) filed an Unopposed Motion to Dismiss Petition for Inter Partes Review due to settlement in the above-identified proceeding challenging U.S. Patent 9,873,638 B2 (“the ’638 Patent”)).
In support of the Motion, Petitioner filed a copy of a written Settlement and License Agreement.
Petitioner and Patent Owner (collectively referred to as “the Parties”) also filed a Joint Request That Settlement Agreement Be Treated as Business Confidential Information and Be Kept Separate pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
In the Motion, Petitioner represents that “[t]he parties have entered into a confidential settlement agreement (‘Settlement Agreement’) that will resolve the parties’ instant dispute regarding the challenged ’638 Patent, as well as a lawsuit in the Eastern District of Michigan captioned as Sulf4r- Plus, LLC v. Prolime Agriculture, LLC (Civil Action No. 2:22-cv-12798) involving the ’638 Patent.” Mot.
Petitioner states that “a true and correct copy [of this Settlement Agreement] shall be filed with this Office as business confidential information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b)” as “Ex.
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11 Order on Motion: ORDER Granting Petitioner’s Motion for Pro Hac Vice Admission of Steven Susser 37 CFR § 4210

Document IPR2024-00236, No. 11 Order on Motion - ORDER Granting Petitioner’s Motion for Pro Hac Vice Admission of Steven Susser 37 CFR § 4210 (P.T.A.B. Mar. 13, 2024)
Granting Petitioner’s Motion for Pro Hac Vice Admission of Steven Susser
Patent 9,873,638 B2 On December 1, 2023, Prolime Agricultural, LLC and Caudill Seed and Warehouse Co., Ltd. (“Petitioner”) filed a revised motion requesting pro hac vice admission of Steven Susser.
In authorizing a motion for pro hac vice admission, the Board requires the moving party to provide a statement of facts showing there is good cause for the Board to recognize counsel pro hac vice and an affidavit or declaration of the individual seeking to appear in the proceeding.
Based on the facts set forth in the Revised Motion and the accompanying Declaration, we conclude that Mr. Susser has sufficient legal and technical qualifications to represent Petitioner in this proceeding, has demonstrated sufficient litigation experience and familiarity with the subject matter of this proceeding, and meets all other requirements for admission pro hac vice.
In consideration of the foregoing, it is hereby ORDERED that Petitioner’s Revised Motion for pro hac vice admission of Steven Susser (Paper 9) is granted; FURTHER ORDERED that Petitioner is to continue to have a registered practitioner represent it as lead counsel for this proceeding; FURTHER ORDERED that Mr. Susser is authorized to represent Petitioner as back-up counsel only in this proceeding; FURTHER ORDERED that Mr. Susser be familiar with the Patent Trial and Appeal Board Consolidated Trial Practice Guide1 (84 Fed. Reg. 64,280 (Nov. 21, 2019)), and comply with the Board’s Rules of Practice for Trials, as set forth in Part 42 of Title 37, Code of Federal Regulations; and FURTHER ORDERED that Mr. Susser is subject to the Office’s disciplinary jurisdiction under 37 C.F.R. § 11.19(a), and the USPTO Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq.
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8 Notice Notice filing date accorded: Notice Notice filing date accorded

Document IPR2024-00236, No. 8 Notice Notice filing date accorded - Notice Notice filing date accorded (P.T.A.B. Dec. 22, 2023)
For more information, please consult the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012), which is available on the Board Web site at http://www.uspto.gov/PTAB.
Patent Owner is advised of the requirement to submit mandatory notice information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of the petition.
The parties are advised that under 37 C.F.R. § 42.10(c), recognition of counsel pro hac vice requires a showing of good cause.
Such motions shall be filed in accordance with the “Order -- Authorizing Motion for Pro Hac Vice Admission” in Case IPR2013-00639, Paper 7, a copy of which is available on the Board Web site under “Representative Orders, Decisions, and Notices.” The parties are reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in the Patent Trial Appeal Case Tracking System (P-TACTS), accessible from the Board Web site at http://www.uspto.gov/PTAB.
Many non-profit organizations, both inside and outside the intellectual property field, offer alternative dispute resolution services.
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19 Motion Motion to dismiss due to settlement pre DI: Unopposed Motion to Dismiss Petition for Inter Partes Review

Document IPR2024-00236, No. 19 Motion Motion to dismiss due to settlement pre DI - Unopposed Motion to Dismiss Petition for Inter Partes Review (P.T.A.B. Jun. 10, 2024)
On June 7, 2024, the Board authorized Petitioners Prolime Agricultural LLC and Caudill Seed and Warehouse Co., Inc. (“Petitioners”) to file a motion to dismiss the present petition for inter partes review and thereby terminate IPR2024-00236 directed to U.S. Patent No. 9,873,638 (“the ’638 Patent”).
The parties have entered into a confidential settlement agreement (“Settlement Agreement”) that will resolve the parties’ instant dispute regarding the challenged ’638 Patent, as well as a lawsuit in the Eastern District of Michigan captioned as Sulf4r-Plus, LLC v. Prolime Agriculture, LLC (Civil Action No. 2:22-cv-12798) involving the ’638 Patent.
This Settlement Agreement has been made in writing, and a true and correct copy shall be filed with this Office as business confidential information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b) (Ex. 1021).
The Board has precedent for allowing petitioners to withdraw IPR petitions pre-institution when proceedings are in a similar posture.
For the reasons set forth herein, Petitioners Prolime Agricultural LLC and Caudill Seed and Warehouse Co., Inc. respectfully request that the Board grant the Unopposed Motion to Dismiss Petition for Inter Partes Review in Case Number IPR2024-00236 and dismiss the proceeding in its entirety.
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9 Motion PHV: Revised Motion for Pro Hac Vice Admission

Document IPR2024-00236, No. 9 Motion PHV - Revised Motion for Pro Hac Vice Admission (P.T.A.B. Feb. 23, 2024)

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5 Motion PHV: Motion for Pro Hac Vice Admission

Document IPR2024-00236, No. 5 Motion PHV - Motion for Pro Hac Vice Admission (P.T.A.B. Dec. 1, 2023)

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