Trials@uspto.gov
`571.272.7822
`
`
`
`
`IPR2015-01586 Paper 38
` IPR2015-01592 Paper 39
`Entered: November 25, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`HYDRITE CHEMICAL CO.,
`Petitioner,
`
`v.
`
`SOLENIS TECHNOLOGIES, L.P.,
`Patent Owner.
`____________
`
`Case IPR2015-01586
`Patent 8,841,469 B2
`
`Case IPR2015-01592
`Patent 8,962,059 B11
`____________
`
`
`Before ERICA A. FRANKLIN, DONNA M. PRAISS, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`PRAISS, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Termination of the Proceedings
`37 C.F.R. § 42.72
`
`
`
`
`
`
`1 This decision addresses similar issues in both cases; therefore, we issue a
`single judgment to be entered in each case.
`
`
`571.272.7822
`
`
`
`
`IPR2015-01586 Paper 38
` IPR2015-01592 Paper 39
`Entered: November 25, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`HYDRITE CHEMICAL CO.,
`Petitioner,
`
`v.
`
`SOLENIS TECHNOLOGIES, L.P.,
`Patent Owner.
`____________
`
`Case IPR2015-01586
`Patent 8,841,469 B2
`
`Case IPR2015-01592
`Patent 8,962,059 B11
`____________
`
`
`Before ERICA A. FRANKLIN, DONNA M. PRAISS, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`PRAISS, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Termination of the Proceedings
`37 C.F.R. § 42.72
`
`
`
`
`
`
`1 This decision addresses similar issues in both cases; therefore, we issue a
`single judgment to be entered in each case.
`
`
`
`IPR2015-01586 (Patent 8,841,469 B2)
`IPR2015-01592 (Patent 8,962,059 B1)
`
`
`On November 21, 2016, pursuant to Board authorization, Petitioner
`and Patent Owner filed a Joint Motion to Terminate these inter partes
`reviews. Paper 35 (IPR2015-01586); Paper 36 (IPR2015-01592). With the
`Joint Motion, the parties filed a copy of their written settlement agreement
`covering various matters, including those involving the patents at issue in
`these proceedings. Paper 36 (IPR2015-01586); Paper 37 (IPR2015-01592).
`The parties concurrently filed a Joint Request to have the settlement
`agreement treated as confidential business information under 35 U.S.C.
`§ 317(b) and 37 C.F.R. § 42.74(c). Paper 37 (IPR2015-01586); Paper 38
`(IPR2015-01592).
`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.” In this
`proceeding, the Board has not yet reached a decision on the merits with
`respect to the patentability of any involved claim. Accordingly, we must
`terminate the review with respect to Petitioner.
`Furthermore, “[i]f no petitioner remains in the inter partes review, the
`Office may terminate the review or proceed to a final written decision under
`section 318(a).” 35 U.S.C. § 317(a). The Board, therefore, has discretion to
`terminate this review with respect to Patent Owner.
`In their Joint Motions, the parties assert that the settlement agreement
`resolves all active proceedings between the parties involving U.S. Patents
`8,841,469 B2 (“the ’469 patent”) and 8,962,059 B1 (“the ’059 patent”).
`Paper 35 (IPR2015-01586), 2; Paper 36 (IPR2015-01592), 2. The parties
`also assert that there are no other litigations or proceedings pending which
`
`2
`
`
`
`IPR2015-01586 (Patent 8,841,469 B2)
`IPR2015-01592 (Patent 8,962,059 B1)
`
`involve the ’469 and ’059 patents. Id. In addressing the merits of
`terminating these proceedings without a final written decision, the parties
`assert that the following factors support termination: (1) the lack of
`controversy between the parties; (2) the Board having not yet decided the
`IPR on its merits; (3) maintaining the proceedings would discourage future
`settlement by removing a primary motivation for settlement; (4) an appeal
`would take up valuable judicial and/or administrative resources; and
`(5) strong public policy reasons favor settlement between parties. Paper 35
`(IPR2015-01586), 2–3; Paper 36 (IPR2015-01592), 2–3. The parties also
`cite the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48768
`(Aug. 14, 2012), regarding the Board’s expectation “that a proceeding will
`terminate after the filing of a settlement agreement, unless the Board has
`already decided the merits of the proceeding.” Paper 35 (IPR2015-01586),
`3–4; Paper 36 (IPR2015-01592), 3–4.
`At the outset, we note the status of these inter partes review trials.
`The parties have completed all briefing, the Board held a consolidated oral
`hearing on September 13, 2016, and the statutory deadline for rendering a
`final written decision is approximately two months away. While termination
`of the proceedings at this stage may conserve additional judicial resources,
`we typically encourage settlements to occur earlier in a proceeding.
`On the particular facts of this case, however, we determine that
`termination is appropriate. As the parties note, the settlement agreement
`resolves all pending disputes between the parties and there are no related
`matters pending which involve the ’469 and ’059 patents. Paper 35
`(IPR2015-01586), 2; Paper 36 (IPR2015-01592), 2. We are persuaded that
`the parties’ disputes are settled completely and, under these circumstances,
`
`3
`
`
`
`IPR2015-01586 (Patent 8,841,469 B2)
`IPR2015-01592 (Patent 8,962,059 B1)
`
`the public policy favoring settlement outweighs the increased public interest
`in final written decisions at this late stage in these proceedings.
`For those reasons, we determine that it is appropriate to terminate
`these inter partes reviews as to both Petitioner and Patent Owner without
`rendering final written decisions. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72.
`In light of the foregoing, it is:
`ORDERED that the parties’ Joint Requests (Paper 37 (IPR2015-
`01586); Paper 38 (IPR2015-01592)) to have their settlement agreement
`(Paper 36 (IPR2015-01586); Paper 37 (IPR2015-01592)) treated as business
`confidential information, to be kept separate from the patent file, is granted;
`FURTHER ORDERED that the Joint Motions to Terminate these
`proceedings (Paper 35 (IPR2015-01586); Paper 36 (IPR2015-01592)) are
`granted; and
`FURTHER ORDERED that these inter partes reviews are hereby
`terminated.
`
`
`
`
`
`4
`
`
`
`IPR2015-01586 (Patent 8,841,469 B2)
`IPR2015-01592 (Patent 8,962,059 B1)
`
`PETITIONER:
`
`Richard Roche
`Joel Austin
`Christopher J. Fahy
`QUARLES & BRADY LLP
`richard.roche@quarles.com
`joel.austin@quarles.com
`christopher.fahy@quarles.com
`
`
`
`PATENT OWNER
`
`Joseph Lucci
`David N. Farsiou
`BAKER & HOSTETLER LLP
`jlucci@bakerlaw.com
`dfarsiou@bakerlaw.com
`
`
`
`
`
`
`
`
`5
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