`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
` Paper 13
`
`
` Date: September 22, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HARVEST TRADING GROUP, INC.,
`Petitioner,
`
`v.
`
`VIREO SYSTEMS, INC.,
`Patent Owner.
`
`
`
`Case IPR2016-00947
`Patent 8,962,685 B2
`
`
`
`
`Before JACQUELINE WRIGHT BONILLA, MICHAEL J. FITZPATRICK,
`and ZHENYU YANG, Administrative Patent Judges.
`
`
`
`FITZPATRICK, Administrative Patent Judge.
`
`
`
`DECISION
`Dismissing Petition Pursuant to Settlement
`37 C.F.R. § 42.71(a)
`
`
`
`IPR2016-00947
`Patent 8,962,685 B2
`
`
`Petitioner, Harvest Trading Group, Inc., Inc., filed a Petition to
`institute an inter partes review of claims 1–20 of U.S. Patent 8,962,685 B2
`pursuant to 35 U.S.C. § 311(a). Paper 1. Vireo Systems, Inc. (“Vireo”), the
`only party who has appeared as an owner of the subject patent (see
`Paper 11), did not file a Preliminary Response pursuant to 35 U.S.C. § 313.
`
`On September 7, 2016, the parties contacted Board staff by email,
`stating that they had settled the dispute set forth in the Petition. The parties
`requested a conference call “to seek authorization to file a Joint Motion to
`Terminate Proceedings under 35 U.S.C. § 317(a).” Section 317(a) of Title
`35 governs settlement of instituted inter partes reviews. 35 U.S.C. § 317(a)
`(“An inter partes review instituted under this chapter . . .”). It does not
`govern settlement prior to institution. Accordingly, at our direction on
`September 8, 2016, Board staff sent an email to the parties, informing them
`that they were authorized to file “a joint motion to dismiss the Petition
`pursuant to 37 CFR 42.71(a).”
`
`The parties nonetheless filed a Joint Motion To Terminate Proceeding
`Under 35 U.S.C. § 317(a). Paper 12. That Motion is denied, but we grant
`relief the parties’ seek, i.e., dismissal of the Petition, pursuant to the Rule we
`had directed the parties to file their motion under, i.e., 37 C.F.R. § 42.71(a).
`
`The parties also filed a copy of the settlement agreement (Ex. 2023)
`and, as part of their Motion, they requested that it be treated as business
`confidential information and be kept separate from “the files of the IPR and
`the involved patent.” Paper 12, 2 (citing 35 U.S.C. § 317(b) and 37 C.F.R.
`
`2
`
`
`
`IPR2016-00947
`Patent 8,962,685 B2
`
`
`§ 42.74(c)). Neither 35 U.S.C. § 317(b) nor 37 C.F.R. § 42.74(c) provides
`for keeping a settlement agreement separate from the files “of the IPR,” or
`here, the files of the dismissed Petition. We grant the relief that is
`authorized under 37 C.F.R. § 42.74(c),1 as set forth below.
`
`Accordingly, it is:
`
`ORDERED that the Motion is denied;
`
`FURTHER ORDERED that Petition is dismissed; and
`
`FURTHER ORDERED that the settlement agreement (Ex. 2023) be
`treated as business confidential information and be kept separate from the
`files of U.S. Patent No. 8,962,685 B2.
`
`
`
`
`1 Section 317(b) of Title 35 does not govern here for the same reason that
`§ 317(a) does not.
`
`3
`
`
`
`4
`
`IPR2016-00947
`Patent 8,962,685 B2
`
`
`For Petitioner:
`
`Raymond Miller
`millerra@pepperlaw.com
`
`Curtis Wadsworth
`wadworc@pepperlaw.com
`
`
`
`
`
`For Patent Owner:
`
`Stephen Hall
`shall@bradley.com
`
`Jake Neu
`jneu@bradley.com
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