`Trials@uspto.gov
`571-272-7822 Entered: July 12, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HP INC.,
`Petitioner,
`
`v.
`
`MEMJET TECHNOLOGY LIMITED,
`Patent Owner.
`____________
`
`Case IPR2016-00791
`Patent 8,678,550 B2
`____________
`
`
`Before JAMESON LEE, LYNNE E. PETTIGREW, and
`JOHN F. HORVATH, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`DECISION
`Granting Joint Motion to Terminate
`37 C.F.R. §§ 42.72, 42.74
`
`
`
`On July 6, 2016, the parties filed a joint motion to terminate this
`proceeding (Paper 7, “Mot.”), as well as a joint request (Paper 8, “Req.”) to
`have their settlement agreement treated as business confidential information
`under 37 C.F.R. § 42.74(c). The parties also filed a copy of their settlement
`
`
`
`IPR2016-00791
`Patent 8,678,550 B2
`
`agreement (Ex. 1011), which the parties represent is a true copy pursuant to
`37 C.F.R. § 42.74(b). Mot. 1.
`The parties indicate in their joint motion that they have reached an
`agreement resolving their dispute involving U.S. Patent No. 8,678,550 (“the
`’550 patent”). Id. The parties further indicate they will move to dismiss a
`district court proceeding involving the ’550 patent that is also the subject of
`the parties’ settlement agreement, and that there are no other pending
`proceedings between the parties involving the ’550 patent. Id. at 2.
`This proceeding is in a preliminary stage. No decision on whether to
`institute trial has been made. Under the circumstances presented here, we
`determine that it is appropriate to terminate this preliminary proceeding with
`respect to both Petitioner and Patent Owner. Accordingly, we grant the
`parties’ joint motion to terminate.
`We also grant the parties’ joint request that the settlement agreement
`be treated as business confidential information, to be kept separate from the
`patent file. The parties further request that, “due to the highly sensitive
`nature of the agreement,” they be notified of any written request by a third
`party to the Board for a copy of the settlement agreement and be given an
`opportunity to respond. Mot. 1–2; Req. 1. That request is denied. No such
`notification or opportunity to respond is provided by Board’s rules, and the
`parties have not shown any special circumstance that applies to them as
`compared to all other parties filing settlement agreements with the Board.
`
`Accordingly, it is:
`ORDERED that the parties’ joint motion to terminate this proceeding
`is granted;
`
`2
`
`
`
`IPR2016-00791
`Patent 8,678,550 B2
`
`FURTHER ORDERED that the parties’ joint request that the
`settlement agreement (Ex. 1011) be treated as business confidential
`information, to be kept separate from the patent file, under 37 C.F.R.
`§ 42.74(c), is granted;
`FURTHER ORDERED that the parties’ joint request to have them be
`given notice and opportunity to respond when a third party submits a written
`request for a copy of the settlement agreement is denied; and
`FURTHER ORDERED that this proceeding is terminated.
`
`
`
`FOR PETITIONER:
`Dion M. Bregman
`Andrew J. Gray IV
`Bradford A. Cangro
`Jacob A. Snodgrass
`Archis (Neil) V. Ozarkar
`MORGAN, LEWIS & BOCKIUS LLP
`Dion.bregamn@morganlewis.com
`Andrew.gray@morganlewis.com
`Bradford.cangro@morganlewis.com
`Jacob.snodgrass@morganlewis.com
`Neil.ozarkar@morganlewis.com
`
`FOR PATENT OWNER:
`James M. Glass
`Marc L. Kaplan
`John McKee
`QUINN EMANUEL URQUHART & SULLIVAN LLP
`jimglass@quinnemanuel.com
`marckaplan@quinnemanuel.com
`johnmckee@quinnemanuel.com
`
`3
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