UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
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`UNIVERSITY OF WATERLOO,
`
`Assignee of U.S. Patent Application No. 15/513,914
`
`Petitioner,
`
`v.
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`SALIENT ENERGY INC.
`
`Assignee of U.S. Patent No. 9,780,412
`
`Respondent.
`
`____________
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`Case No.: DER2018-00018
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`____________
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`JOINT MOTION TO TERMINATE DERIVATION PROCEEDING
`AND NOTICE OF SETTLEMENT
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`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`UNIVERSITY OF WATERLOO,
`
`Assignee of U.S. Patent Application No. 15/513,914
`
`Petitioner,
`
`v.
`
`SALIENT ENERGY INC.
`
`Assignee of U.S. Patent No. 9,780,412
`
`Respondent.
`
`____________
`
`Case No.: DER2018-00018
`
`____________
`
`JOINT MOTION TO TERMINATE DERIVATION PROCEEDING
`AND NOTICE OF SETTLEMENT
`
`
`
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`I.
`
`Introduction
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`
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`Petitioner University of Waterloo (“UW” or “Petitioner”) and Respondent
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`Salient Energy Inc. (“Salient” or “Respondent”) have entered into a confidential
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`settlement agreement (“Settlement Agreement”) that resolves all underlying
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`disputes between the parties, including this proceeding, DER2018-00018,
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`involving Application No. 15/513,914 (“the ’914 Application”) and Patent No.
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`9,780,412 (“the ’412 Patent”), currently pending before the Board. Petitioner and
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`Respondent hereby jointly move to terminate this proceeding under the settlement
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`provisions of the AIA (codified for derivation proceedings as 35 U.S.C. § 135(e))
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`and the Board’s inherent discretionary authority under 35 U.S.C. § 135(a)(1).
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`The parties are submitting, under seal with the Board, this Settlement
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`Agreement, labeled as Exhibit 1025. Pursuant to 35 U.S.C. § 135(e), the parties
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`request that the Settlement Agreement be: treated as business confidential
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`information, kept separate from the file of the involved patents or applications, and
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`made available only to Government agencies on written request, or to any person
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`on a showing of good cause.
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`This proceeding has not yet been instituted, and the Settlement Agreement
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`will fully resolve any issues relevant to this proceeding. Accordingly, the parties
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`jointly request termination of this proceeding with respect to all of the parties.
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`1
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`
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`II. Statement of Reasons for the Relief Requested
`A. The parties have agreed to amend the inventorship of the
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`’412 Patent
`The Settlement Agreement includes, inter alia, a written statement reflecting
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`the agreement of the parties to correct the inventorship of the patent in dispute (i.e.,
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`the ’412 Patent) in this proceeding. Based on this agreement, the parties can
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`resolve any disputes in the inventorship without requiring the involvement of this
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`Board.
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`B.
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`The Patent and Application Will be Assigned to the Same Entity
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`Under the terms of the Settlement Agreement, the ’412 Patent will be
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`assigned by Respondent to Petitioner, who is the current assignee of the ’914
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`Application. Thus, the settlement will result in the Petitioner becoming the owner
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`of both the ’914 Application and the ’412 Patent. As the settlement will result in
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`both being owned by the same entity, there will be no reason to institute or
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`otherwise continue with this proceeding. 37 C.F.R. § 42.411.
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`C.
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`Public Policy Favors Terminating These Proceedings
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`Congress and the Federal Courts encourage settlement between litigants.
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`See, e.g., Bergh v. Dept. of Transp., 794 F.2d 1575, 1577-78 (Fed. Cir. 1986)
`
`(“The law favors settlement of cases.”), cert. denied, 479 U.S. 950 (1986). The
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`U.S. Court of Appeals for the Federal Circuit also places a particularly strong
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`emphasis on settlement. See Flex-Foot, Inc. v. CRP, Inc., 238 F.3d 1362, 1370
`
`
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`
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`2
`
`
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`
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`(Fed. Cir. 2001) (“Settlement agreements must be enforced if they are to remain
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`effective as a means for resolving legal disagreements[;] [u]pholding the terms of
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`settlement agreements encourages patent owners to agree to settlements and
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`promotes judicial economy.”); Cheyenne River Sioux Tribe v. U.S., 806 F.2d 1046,
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`1050 (Fed. Cir. 1986) (noting that the law favors settlement to reduce antagonism
`
`and hostility between parties). Because Congress devised these proceedings as an
`
`alternative to litigation, termination following settlement comports with public
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`policy. See 77 Fed. Reg. 48680, 48680 (Aug. 14, 2012) (“The purpose of the AIA
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`and this final rule is to establish a more efficient and streamlined patent system that
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`will improve patent quality and limit unnecessary and counterproductive litigation
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`costs”). As stated in the Board’s Trial Practice Guide, “[t]here are strong public
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`policy reasons to favor settlement between the parties to a proceeding.” Office
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`Patent Trial Practice Guide, 77 Fed. Reg. 48756, 46768 (Aug. 14, 2012). As the
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`Settlement Agreement includes provisions for assignment of patents and
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`applications, licensing of IP, and releases, it also furthers the public policy
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`objective of promoting access to technology.
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`
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`D.
`
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`Allowing the Parties to Negotiation Terms of a Settlement,
`Including Termination of Proceedings, Serves the Public Interest
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`Maintaining this proceeding despite Petitioner’s and Respondent’s mutual
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`desire to fully terminate it would prevent the Settlement Agreement from
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`becoming effective and thus the disposition of the issues contested by the parties
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`3
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`
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`and the mutually agreed upon assignments of patents and applications and
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`licensing. The Settlement Agreement is the result of significant negotiating
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`between the parties and reflects a deal in which each side has made compromises
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`and has eliminated risk.
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`Termination of These Proceedings is Appropriate at This Stage
`in the Proceedings in View of the Agreement
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`E.
`
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`The USPTO can conserve its resources through terminating this proceeding
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`now, obviating the need for the Board to further consider whether to institute this
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`proceeding.
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`Because this proceeding has not yet been instituted, the expected normal
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`course is to terminate proceedings upon settlement. See, e.g., Office Patent Trial
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`Practice Guide, 77 Fed. Reg. 48756, 46768 (Aug. 14, 2012) (“The Board expects
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`that a proceeding will terminate after the filing of a settlement agreement, unless
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`the Board has already decided the merits of the proceeding.”).
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`III. Status of Related Proceedings
`Petitioner and Respondent are unaware of any judicial or administrative
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`matters pending in the United States. Regarding related matter CV-18-00000714-
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`00 pending in the Ontario Superior Court of Justice (Statement of Claim filed by
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`Petitioner and corresponding counterclaim filed by Respondent), the parties will,
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`as part of the Settlement Agreement, submit a Notice of Discontinuance to
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`discontinue this matter with prejudice.
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`4
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`
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`IV. Conclusion
`For the foregoing reasons, Petitioner and Respondent request that the Board
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`terminate this proceeding in its entirety.
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`Respectfully submitted,
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`
`
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`By: /Barry E. Bretschneider/
`Barry E. Bretschneider
`Reg. No. 28,055
`LEAD ATTORNEY FOR
`RESPONDENT SALIENT ENERGY
`INC.
`Baker & Hostetler LLP
`Washington Square, Suite 1100
`1050 Connecticut Avenue, N. W.
`Washington, DC 20036-5304
`Tel: (202) 861-1754 (direct)
`e-mail: bbretschneider@bakerlaw.com
`
`Dated: January 22, 2019
`
`
`
`
`
`
`By: /W. Todd Baker/
`W. Todd Baker
`Reg. No. 45,265
`LEAD ATTORNEY FOR
`PETITIONER UNIVERSITY OF
`WATERLOO
`Oblon, McClelland, Maier &
` Neustadt, LLP
`1940 Duke Street
`Alexandria, Virginia 22314
`Tel: (703)413-6383 (direct)
`Email: cpdocketbaker@oblon.com
`
`Dated: January 22, 2019
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`5
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`CERTIFICATE OF SERVICE
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`
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`The undersigned certifies service of the foregoing JOINT MOTION TO
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`TERMINATE DERIVATION PROCEEDING AND NOTICE OF SETTLEMENT
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`on counsel for Respondent via email to the following:
`
`Barry E. Bretschneider
`Charles C. Carson
`BAKER & HOSTETLER LLP
`James W. Hinton
`BERESKIN & PARR
`bbretschneider@bakerlaw.com
`ccarson@bakerlaw.com
`jhinton@bereskinparr.com
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`Respectfully submitted,
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`Oblon, McClelland, Maier &
`Neustadt, LLP
`
`
`
`
`
`/W. Todd Baker/
`W. Todd Baker
`Reg. No. 45,265
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`Dated: January 22, 2019
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