`571-272-7822
`
`
`
`
`
`Paper No. 12
`Entered: June 15, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BARCO, INC.,
`Petitioner,
`
`v.
`
`T-REX PROPERTY AB,
`Patent Owner.
`____________
`
`
`Case IPR2017-01909
`Patent RE39,470
`
`
`
`Before SALLY C. MEDLEY, THOMAS L. GIANNETTI, and
`DANIEL N. FISHMAN, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge
`
`
`
`JUDGMENT
`Termination of the Proceeding
`37 C.F.R. § 42.72
`
`
`
`On June 5, 2018, Petitioner and Patent Owner filed a Joint Motion to
`Terminate Proceeding (Paper 9; “Motion”) under 35 U.S.C. § 317(a), and a
`Joint Request to File Settlement Agreement as Business Confidential
`Information (Paper 10) in order to have the settlement agreement kept
`separate from the files of the involved patent under 37 U.S.C. § 317(b) and
`
`
`
`IPR2017-01909
`Patent RE39,470
`
`37 C.F.R. § 42.74(c). The settlement agreement was filed as confidential.
`Ex. 1008.
`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.”
`Generally, the Board expects that a proceeding will terminate after the filing
`of a settlement agreement, if the settlement agreement includes all parties.
`See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768
`(Aug. 14, 2012). The parties have filed such an agreement. Ex. 1008.
`In their Motion, the parties indicate that they have settled their dispute
`with regard to U.S. Patent No. RE39,470 and that all related litigation
`involving U.S. Patent No. RE39,470 between the parties has been dismissed.
`Motion 2.1 In a separate communication (Ex. 3001), the parties certify that
`there are no other written or oral agreements or understandings, including
`any collateral agreements, between the parties, that are made in connection
`with, or in contemplation of, the termination of the proceedings. See 37
`U.S.C. § 317(b). They further state that the district court lawsuit has been
`dismissed with prejudice. Ex. 3001.
`The trial phase of this proceeding is in its early stage, as Patent Owner
`has not yet filed a Patent Owner Response and Petitioner has not yet filed a
`
`
`1 The Motion, as filed, does not include page numbering as required by our
`rules. The parties are reminded to format all papers and exhibits in this or
`any future post-grant review proceedings before the Board, in accordance
`with 37 C.F.R. § 42.6 and § 42.63.
`
`2
`
`
`
`IPR2017-01909
`Patent RE39,470
`
`Reply. Under these circumstances, we are persuaded that it is appropriate to
`terminate this proceeding with respect to both Petitioner and Patent Owner.
`
`
`Accordingly, it is
`ORDERED that the Joint Motion to Terminate Proceeding is granted;
`FURTHER ORDERED that this proceeding is terminated with respect
`to both Petitioner and Patent Owner; and
`FURTHER ORDERED that the Joint Request to File Settlement
`Agreement as Business Confidential is granted, and Exhibit 1008 will be
`kept as confidential business information under 35 U.S.C. § 317(b) and 37
`C.F.R. § 42.74(c).
`
`
`
`
`
`3
`
`
`
`IPR2017-01909
`Patent RE39,470
`
`PETITIONER:
`
`Edward K. Runyan
`Michael S. Neustel
`NEUSTEL LAW OFFICES, LTD
`edward@neustel.com
`michael@neustel.com
`
`
`FOR PATENT OWNER:
`
`Steven R. Daniels
`Gurtej Singh
`FARNEY DANIELS PC
`sdaniels@farneydaniels.com
`tsingh@farneydaniels.com
`
`4
`
`
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