`571-272-7822
`
`Paper 54
`Entered: August 18, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`Before PHILLIP J. KAUFFMAN, JAMES A. TARTAL, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`
`H&S MANUFACTURING COMPANY, INC.,
`Petitioner,
`
`v.
`
`OXBO INTERNATIONAL CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-00950
`Patent 8,166,739 B2
`____________
`
`DECISION
`Joint Motion to Terminate Inter Partes Review
`35 U.S.C. § 317 and 37 C.F.R. § 42.72
`
`
`
`
`IPR2016-00950
`Patent 8,166,739 B2
`
`
`I. DISCUSSION
`On August 10, 2017, Petitioner, H&S Manufacturing Company, Inc.,
`and Patent Owner, Oxbo International Corporation, (collectively, “the
`parties”), filed a Joint Motion to Terminate Proceeding in this inter partes
`review proceeding (Paper 52) and a Joint Request to Treat Settlement
`Agreement Documents as Business Confidential Information (Paper 53)
`under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). The parties also filed,
`with Board only accessibility, true copies of their Term Sheet and Settlement
`Agreement. Ex. 2023 and Ex. 2024.
`We instituted trial in this proceeding on November 2, 2016, with
`respect to U.S. Patent No. 8,166,739 B2 (“the ’739 patent”). Paper 9. Oral
`argument in this proceeding, previously scheduled for August 1, 2017, was
`cancelled upon receipt of notification from the parties that they had reached
`a settlement agreement resolving their dispute both in this proceeding and in
`a related case in district court. Paper 50. The parties further indicate in their
`Joint Motion to Terminate Proceeding that termination of this proceeding is
`appropriate because they have reached an agreement regarding all
`outstanding disputes with respect to the ’739 patent. See Paper 52, 2.
`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.” This
`proceeding has not yet been the subject of oral argument and we have made
`no final decision as to the parties’ contentions with respect to the ’739
`patent. Additionally, under 37 C.F.R. § 42.74(b), “[a]ny agreement or
`
`2
`
`
`
`IPR2016-00950
`Patent 8,166,739 B2
`
`understanding between the parties made in connection with, or in
`contemplation of, the termination of a proceeding shall be in writing and a
`true copy shall be filed with the Board before termination of the trial.” The
`parties filed their written settlement agreements in support of their Joint
`Motion to Terminate Proceeding. Ex. 2023 and Ex. 2024. Under the
`circumstances presented, and based on the representations of the parties
`presented in the Joint Motion to Terminate Proceeding, we determine that it
`is appropriate to terminate this proceeding. See 35 U.S.C. § 317(a);
`37 C.F.R. § 42.72.
`
`II. ORDER
`
`Accordingly, it is:
`ORDERED that the parties’ Joint Request to Treat Settlement
`Agreement Documents as Business Confidential Information pursuant to
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is GRANTED; and
`FURTHER ORDERED that the parties’ Joint Motion to Terminate
`Proceeding in this inter partes review proceeding is GRANTED.
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2016-00950
`Patent 8,166,739 B2
`
`PETITIONER
`Brad D. Pedersen
`Eric H. Chadwick
`Michael P. Gates
`PATTERSON THUENTE PEDERSEN, P.A.
`pedersen@ptslaw.com
`chadwick@ptslaw.com
`gates@ptslaw.com
`
`PATENT OWNERS
`Andrew J. Lagatta
`Gregory A. Sebald
`MERCHANT & GOULD P.C.
`alagatta@merchantgould.com
`gsebald@merchantgould.com
`
`
`
`4
`
`
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