UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`H&S MANUFACTURING COMPANY, INC.
`
`Petitioner,
`
`v.
`
`OXBO INTERNATIONAL CORPORATION
`
`Patent Owner.
`
`Case IPR2016~00950
`
`Patent 8,166,739
`
`JOINT MOTION TO TERMINATE PROCEEDING PURSUANT
`
`TO
`
`35 U.S.C. § 317(A)
`
`JOINT NOTICE OF SETTLEMENT PURSUANT TO
`
`35 U.S.C. § 317(3) AND 37 C.F.R. § 42.74
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`H&S MANUFACTURING COMPANY, INC.
`
`Petitioner,
`
`v.
`
`OXBO INTERNATIONAL CORPORATION
`
`Patent Owner.
`
`Case IPR2016~00950
`
`Patent 8,166,739
`
`JOINT MOTION TO TERMINATE PROCEEDING PURSUANT
`
`TO
`
`35 U.S.C. § 317(A)
`
`JOINT NOTICE OF SETTLEMENT PURSUANT TO
`
`35 U.S.C. § 317(3) AND 37 C.F.R. § 42.74
`
`
`
`RELIEF REQUESTED
`
`Pursuant to 35 U.S.C. § 317(a-b), and as authorized by Paper 50, Petitioner
`
`H&S Manufacturing Company, Inc. (“H&S”) and Patent Owner Oxbo
`
`International Corporation (“Oxbo”) provide notice that they have settled their
`
`disputes regarding US. Patent No. 8,166,739 (“the ’739 patent”) and jointly
`
`request termination of Case No. IPR2016-00950.
`
`This paper accompanies a joint request by the Parties that the Patent Trial
`
`and Appeal Board (“Board”) treat Exhibits 2023 and 2024 submitted herewith as
`
`confidential business information and keep those exhibits separate from the file of
`
`the involved patent.
`
`STATEMENT OF REASONS FOR THE RELIEF REQUESTED
`
`The Parties have reached a settlement agreement regarding their disputes
`
`relating to the ’739 Patent.
`
`In response to the requirements outlined in Paper 50,
`
`and pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74, the Parties submit
`
`concurrently with this Motion the Binding Term Sheet for Settlement Agreement
`
`(the “Term Sheet”) entered on July 3 1 , 2017, and the final Settlement Agreement
`
`entered on August 9, 2017 (the “Settlement Agreement”) between the parties
`
`(EX2023 and EX2024, respectively).
`
`In support of this Motion, the Parties further provide notice as follows:
`
`
`
`First, termination ofthis proceeding is appropriate. The Oral Hearing in this
`
`proceeding, scheduled for August 1, 2017, was canceled on July 31, 2017 at the
`
`Parties’ request, before both parties completed filing of their respective
`
`demonstratives.l Thus, the Parties have not completed their submissions or fully
`
`argued their respective positions, and the Board has not issued a final written
`
`decision.
`
`Second, the Parties represent that the current status of the litigation
`
`involving the ’739 Patent identified in Patent Owner’s Mandatory Notices (Paper
`
`5), captioned Oxbo [m ’l Corp. v. H&S Mfg. Ca, No. lS-cv—00292, (W1). Wis), is
`
`as follows: A final judgment and a permanent injunction involving four Oxbo
`
`patents including the ’739 patent were entered by the district court on August 3,
`
`2017, copies of which are submitted concurrently as EX2025 and EX2026,
`
`respectively. Furthermore, the Term Sheet and Settlement Agreement prohibit the
`
`Parties from bringing any post-trial motions or appealing any issues in the
`
`litigation. Thus, all patent issues between the Paities, including those relating to the
`
`1 Although Petitioner submitted its demonstratives on July 27, 2017 as
`
`EX1032, Patent Owner did not file its demonstratives due to cancellation of the
`
`August 1, 2017 Oral Hearing.
`
`
`
`’739 patent, are resolved by the Term Sheet and Settlement Agreement.2
`
`Accordingly, no district court litigation related to the ’739 patent is currently
`
`pending, and the attached settlement documents fiilly resolve all underlying
`
`disputes between the parties.
`
`In accordance with Paper 50, the undersigned counsel for both Parties
`
`hereby certify that the Term Sheet and Settlement Agreement represent a true copy
`
`of all current agreements and understandings between the parties that are made in
`
`connection with, or in contemplation of, the joint request for termination of this
`
`proceeding.
`
`The Parties submit concurrently with this Motion a Request to Treat EX2023
`
`and EX2024 as business confidential information.
`
`Accordingly, the Parties jointly request that the Board terminate this IPR
`
`pursuant to 35 U.S.C. § 317(3).
`
`2 The Parties notified the Board of the settlement and requested cancellation
`
`of the Oral Hearing following execution of the Term Sheet, which required a
`
`Settlement Agreement containing all material conditions of the Term Sheet. The
`
`Term Sheet also provided that in the event a final Settlement Agreement could not
`
`be reached in the required timeframe, the Term Sheet would become binding.
`
`4
`
`
`
`CONCLUSION
`
`For the reasons stated above, the Parties respectfully request that the Board
`
`terminate Inter Parres Review of US. Patent No. 8,166,739, Case No. IPR2016-
`
`00950.
`
`Respectfully submitted,
`
`MERCHANT & GOULD, P.C.
`
`Date: August 10, 2017
`
`£21.45, /
`
`Andrew J. Lagatta, Reg. No. 62,529
`Merchant & Gould RC.
`
`80 South 8th St., Suite 3200
`
`Minneapolis, MN 55402
`Telephone: (612) 332—5300
`Fax: (612) 332-9081
`alagatta@merchantgou1d.com
`OxbolPR@merchantgould.com
`
`(Trial No. IPR2016-00950)
`
`A TTORNE Y5 FOR PA TENT O WNER
`
`Date: August 10, 2017
`
`PATTERSON THUENTE PEDERSEN,
`
`P.A.
`
`Brad D. Pedersen (Reg. No. 32,432)
`Eric H. Chadwick (Reg. No. 42,664)
`PATTERSON THUENTE PEDERSEN,
`
`PA.
`
`80 South Eighth Street, Suite 4800
`Minneapolis, MN 55402
`Phone: (612) 349-5740
`Facsimile: (612) 349-9266
`chadwick@ptslaw.com
`pedersen@ptslaw.com
`
`(Trial No. IPR2016-00950)
`
`A TTORNE YS FOR PE TITIONER
`
`5
`
`
`
`CERTIFICATION OF SERVICE
`
`The undersigned hereby certifies that this “JOINT MOTION TO
`
`TERMINATE PROCEEDING PURSUANT TO 35 U.S.C. § 317(A)” for the
`
`above-captioned matter was served in its entirety on August 10, 2017, upon the
`
`following parties via e-mail:
`
`Brad D. Pedersen (Reg. No. 32,432)
`Eric H. Chadwick (Reg. No. 42,664)
`PATTERSON THUENTE PEDERSEN, PA.
`
`80 South Eighth Street, Suite 4800
`Minneapolis, MN 55402
`Phone: (612) 349—5740
`Facsimile: (612) 349-9266
`chadwick@ptslaw.com
`pedersen@ptslaw.com
`
`Respectfully submitted,
`MERCHANT & GOULD, P.C.
`
`Date: August 10, 2017
`
`/Andrew J. Lagatta/
`
`Andrew J. Lagatta, Reg. No. 62,529
`Merchant & Gould RC.
`
`80 South 8th St., Suite 3200
`
`Minneapolis, MN 55402
`Telephone: (612) 332-5300
`Fax: (612) 332-9081
`alagatta@merchantgould.com
`
`(IPR2016-00950)
`
`A TTORNEYS FOR PA TENT OWNER
`
`
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