Chrysler Group LLCv.Norman IP Holdings, LLCDownload PDFPatent Trial and Appeal BoardJun 26, 201408226717 (P.T.A.B. Jun. 26, 2014) Copy Citation Trials@uspto.gov Paper 13 571-272-7822 Entered: June 26, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ CHRYSLER GROUP LLC, Petitioner, v. NORMAN IP HOLDINGS, LLC, Patent Owner. ____________ Case IPR2014-00560 Patent 5,592,555 ____________ Before BRYAN F. MOORE, HYUN J. JUNG, and FRANCES L. IPPOLITO, Administrative Patent Judges. JUNG, Administrative Patent Judge. ORDER Motion to Terminate 37 C.F.R. § 42.72 IPR2014-00560 Patent 5,592,555 2 On June 23, 2014, the parties filed a joint motion to terminate the trial proceedings under 35 U.S.C. § 317(a). Paper 10. Along with the motion, the parties filed a copy of a document they described as the written settlement agreement, as well as a separate joint request to treat the settlement agreement as business confidential information under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Papers 11, 12. The motion and request were filed without prior authorization from the Board. We remind the parties that a “motion will not be entered without Board authorization,” but because these papers were filed jointly, we exercise our discretion to enter and consider the motion and request. 37 C.F.R. § 42.20(b); see also 37 C.F.R. § 42.5(b). 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.” The parties are reminded that the Board is not a party to the settlement, and may identify independently any question of patentability. 37 C.F.R § 42.74(a). Generally, however, the Board expects that a proceeding will terminate after the filing of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). The parties stated in their joint motion that they have settled their dispute and have reached agreement to terminate this inter partes review. Paper 10, 2. Patent Owner has not yet filed a preliminary response or a waiver under 37 C.F.R. § 42.107. We are persuaded that, under these circumstances, it is appropriate to terminate this proceeding without rendering a final written decision. 37 C.F.R. § 42.72. IPR2014-00560 Patent 5,592,555 3 Accordingly, it is: ORDERED that the joint motion to terminate this proceeding is GRANTED and this proceeding is hereby terminated; and FURTHER ORDERED that the parties’ joint request that the settlement agreement (Paper 12) be treated as business confidential information, kept separate from the file of the involved patent, and made available only to Federal Government agencies on written request, or to any person on a showing of good cause, under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is GRANTED. IPR2014-00560 Patent 5,592,555 4 PETITIONER: Frank C. Cimino, Jr. Jonathan L. Falkler DICKSTEIN SHAPIRO LLP CiminoF@dicksteinshapiro.com FalklerJ@dicksteinshapiro.com PATENT OWNER: Minghui Yang Greg Donahue DINOVO PRICE ELLWANGER & HARDY LLP myang@dpelaw.com gdonahue@dpelaw.com Copy with citationCopy as parenthetical citation
