Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 11
`Entered: January 30, 2019
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIVERSITY OF WATERLOO,
`Petitioner,
`
`v.
`
`SALIENT ENERGY INC.,
`Respondent.
`____________
`
`Case DER2018-00018
`Petitioner Application 15/513,914
`Respondent Patent 9,780,412 B2
`____________
`
`Before SALLY C. MEDLEY, JAMES T. MOORE, and JUSTIN T. ARBES,
`Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`
`DECISION
`Granting Joint Motion to Terminate and
`Request to Treat Settlement Agreement as
`Business Confidential Information
`
`
`
`571-272-7822
`
`
`
`
`Paper 11
`Entered: January 30, 2019
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIVERSITY OF WATERLOO,
`Petitioner,
`
`v.
`
`SALIENT ENERGY INC.,
`Respondent.
`____________
`
`Case DER2018-00018
`Petitioner Application 15/513,914
`Respondent Patent 9,780,412 B2
`____________
`
`Before SALLY C. MEDLEY, JAMES T. MOORE, and JUSTIN T. ARBES,
`Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`
`DECISION
`Granting Joint Motion to Terminate and
`Request to Treat Settlement Agreement as
`Business Confidential Information
`
`
`
`
`DER2018-00018
`Petitioner Application 15/513,914
`Respondent Patent 9,780,412 B2
`
`
`On July 20, 2018, Petitioner filed a petition to institute a derivation
`proceeding under 35 U.S.C. § 135 with respect to claims 1–16 of U.S. Patent
`No. 9,780,412 B2 (Ex. 1001, “the ’412 patent”). See Papers 1 (confidential
`version), 2 (public redacted version). Petitioner also filed a motion to seal
`the redacted portions of the petition, certain portions of Exhibits 1005 and
`1006, and the entireties of Exhibits 1009, 1016, 1017, 1019, and 1021–1023.
`Paper 4. Respondent did not file an opposition to the motion to seal.
`On January 22, 2019, the parties filed a joint motion to terminate this
`proceeding on the basis of a settlement reached by the parties. See Paper 8
`(“Mot.”); 37 C.F.R. §§ 42.74, 42.409. The parties also filed a copy of their
`written settlement agreement (Exhibit 1025) and a request (Paper 9) that the
`agreement be treated as business confidential information under 35 U.S.C.
`§ 135(e) and 37 C.F.R. § 42.74(c). The parties state in the joint motion that
`they have entered into a settlement agreement that “resolves all underlying
`disputes between the parties” and reflects the parties’ agreement to correct
`the inventorship of Respondent’s ’412 patent and assign the ’412 patent to
`Petitioner. Mot. 1–2. The parties further state that they have agreed to
`submit a Notice of Discontinuance in a related proceeding in the Ontario
`Superior Court of Justice. Id. at 4.
`We have not yet exercised exclusive jurisdiction over Petitioner’s
`involved application, U.S. Patent Application No. 15/513,914 (“the
`’914 application”), and Respondent’s ’412 patent or determined whether to
`institute a derivation proceeding. Given these facts, we determine that it is
`appropriate to terminate the proceeding at this time and under these
`circumstances, which renders moot Petitioner’s pending motion to seal.
`
`
`2
`
`
`
`
`
`DER2018-00018
`Petitioner Application 15/513,914
`Respondent Patent 9,780,412 B2
`
`
`Finally, we note that both Petitioner’s ’914 application and the
`application that issued as Respondent’s ’412 patent are available to the
`public. The ’914 application published as U.S. Patent Application
`Publication No. 2017/0250449 A1 on August 31, 2017. The ’412 patent
`issued on October 3, 2017. Pursuant to 37 C.F.R. § 42.412(b)(1), “[t]he
`record of a Board proceeding is available to the public, unless a patent
`application not otherwise available to the public is involved.” Thus, absent
`any objection from the parties, the record of this proceeding (other than the
`parties’ settlement agreement and the documents subject to Petitioner’s
`motion to seal) will be made publicly available in the Patent Trial and
`Appeal Board End to End (PTAB E2E) system.
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s motion to seal (Paper 4) is dismissed as
`moot;
`FURTHER ORDERED that Paper 1; the confidential versions of
`Exhibits 1005 and 1006; and Exhibits 1009, 1016, 1017, 1019, and
`1021–1023 will be expunged from the record of this proceeding;
`FURTHER ORDERED that the record of this proceeding (other than
`Exhibit 1025 and the expunged documents listed above) will be made
`publicly available, unless either party notifies the Board, by email to
`Trials@uspto.gov by February 4, 2019, that it objects to doing so;
`FURTHER ORDERED that the parties’ joint request (Paper 9) that
`the settlement agreement (Exhibit 1025) be treated as business confidential
`information, kept separate from the files of the ’914 application and the
`’412 patent, and made available only to Federal Government agencies on
`
`
`3
`
`
`
`
`
`DER2018-00018
`Petitioner Application 15/513,914
`Respondent Patent 9,780,412 B2
`
`written request, or to any person on a showing of good cause, under
`35 U.S.C. § 135(e) and 37 C.F.R. § 42.74(c), is granted;
`FURTHER ORDERED that the joint motion to terminate this
`proceeding (Paper 8) is granted and the proceeding is hereby terminated;
`and
`
`FURTHER ORDERED that a copy of this Decision be placed in the
`files of the ’914 application and the ’412 patent.
`
`
`
`
`
`
`4
`
`
`
`
`
`DER2018-00018
`Petitioner Application 15/513,914
`Respondent Patent 9,780,412 B2
`
`PETITIONER:
`
`W. Todd Baker
`Lisa Mandrusiak
`Sasha Rao
`OBLON, McCLELLAND, MAIER & NEUSTADT, LLP
`cpdocketbaker@oblon.com
`cpdocketmandrusiak@oblon.com
`cpdocketrao@oblon.com
`
`
`RESPONDENT:
`
`Barry E. Bretschneider
`Charles C. Carson
`BAKER & HOSTETLER LLP
`bbretschneider@bakerlaw.com
`ccarson@bakerlaw.com
`
`
`
`
`
`
`
`5
`
`
`
`
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