Ford Motor Companyv.Speed Monitoring Technologies LLC

Patent Trial and Appeal Board

Jul 28, 2015

11708385 (P.T.A.B. Jul. 28, 2015)

Trials@uspto.gov Paper 18
571-272-7822 Entered: July 28, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

FORD MOTOR COMPANY,
Petitioner,

v.

SPEED MONITORING TECHNOLOGIES LLC,
Patent Owner.
____________

Case IPR2014-01500
Patent 7,389,198 B1
____________

Before HOWARD B. BLANKENSHIP, KARL D. EASTHOM, and
LYNNE E. PETTIGREW, Administrative Patent Judges.

PETTIGREW, Administrative Patent Judge.

DECISION
Termination of the Proceeding
37 C.F.R. §§ 42.72, 42.73, 42.74

I. DISCUSSION
On July 24, 2015, the parties filed a Joint Motion to terminate this
proceeding (Paper 16), as well as a Joint Request (Paper 17) to have their
settlement agreement treated as business confidential information under
IPR2014-01500
Patent 7,389,198 B1
2
35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). The parties also filed a true
copy of their settlement agreement. Ex. 1009. The parties indicate in their
Joint Motion that termination of this proceeding is appropriate because they
have reached an agreement resolving their dispute involving U.S. Patent No.
7,389,198 (“the ’198 patent”). See Paper 16, 2. The parties indicate they do
not see any further litigation between them relating to the ’198 patent. Id.
They further certify that there are no collateral agreements or understandings
made in connection with the termination of this proceeding. Id.
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.” As
indicated in the Motion, the parties are requesting termination prior to oral
hearing and prior to the Board’s final written decision. Paper 16, 2. We also
note that briefing has not been completed, as Petitioner has not filed a Reply
to Patent Owner’s Response.
Further, under 37 C.F.R. § 42.74(b), “[a]ny agreement or
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.” As
the parties have filed their written settlement agreement, we determine it is
appropriate to terminate this proceeding without rendering a Final Written
Decision as to the patentability of claims 1–5 and 8–13 of the ’198 patent.
See 37 C.F.R. §§ 42.72, 42.73, 42.74.
IPR2014-01500
Patent 7,389,198 B1
3
II. ORDER
Accordingly, it is:
ORDERED that the parties’ Joint Motion to terminate this proceeding
is granted;
FURTHER ORDERED that the parties’ Joint Request that the
settlement agreement (Ex. 1009) be treated as business confidential
information, to be kept separate from the patent file, is granted; and
FURTHER ORDERED that this proceeding is terminated.

FOR PETITIONER:
Eric A. Buresh
Jason R. Mudd
ERISE IP, P.A.
eric.buresh@eriseip.com
jason.mudd@eriseip.com

FOR PATENT OWNER:
John R. Kasha
Kelly L. Kasha
Kasha Law LLC
john.kasha@kashalaw.com
kelly.kasha@kashalaw.com