Honeywell International Inc.v.CREE, INC.

Patent Trial and Appeal BoardOct 26, 2015

13798019 (P.T.A.B. Oct. 26, 2015)

Trials@uspto.gov Paper 10 Tel: 571-272-7822 Entered: October 26, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ HONEYWELL INTERNATIONAL, INC., Petitioner, v. CREE, INC., Patent Owner. ____________ IPR2015-01360 (Patent 8,860,058) IPR2015-01361 (Patent 8,860,058) IPR2015-01378 (Patent 8,659,034) 1 _____________ Before KEVIN F. TURNER, ERICA A. FRANKLIN, and ROBERT J. WEINSCHENK, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. JUDGMENT Termination of the Proceeding 37 C.F.R. § 42.72 1 This judgment addresses issues that are identical in each case. We, therefore, exercise our discretion to issue one order to be filed in each case. IPR2015-01360 (Patent 8,860,058) IPR2015-01361 (Patent 8,860,058) IPR2015-01378 (Patent 8,659,034) 2 On October 22, 2015, the parties filed joint motions to terminate the proceedings pursuant to 35 U.S.C § 317. Paper 8. 2 In addition, and pursuant to 35 U.S.C § 317 (b) and 37 C.F.R. § 42.74, the parties filed a true copy of their written settlement agreement, Ex. 1017, and requested in the joint motions that the settlement agreement be treated as business confidential information and kept separate from the file of the involved patents, Paper 9. 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.” 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.” These cases are in the preliminary proceeding stage; a decision whether to institute trial has not been made. As the parties jointly request termination of the proceedings, and have filed their written settlement agreement, we determine that it is appropriate to terminate the proceedings. 3 See 37 C.F.R. §§ 42.72, 42.73, 42.74. As requested by the parties, the settlement agreement will be treated as business confidential information and kept separate from the files of the involved patents. 37 C.F.R. § 42.74(c). 2 Paper and Exhibit numbers cited in this judgment are the same in each case. 3 Termination of these proceedings renders moot Petitioner’s Unopposed Motions to Correct Exhibits 1007 and 1008, Paper 7. IPR2015-01360 (Patent 8,860,058) IPR2015-01361 (Patent 8,860,058) IPR2015-01378 (Patent 8,659,034) 3 Accordingly, it is ORDERED that the parties’ joint requests that the settlement agreement be treated as business confidential information and be kept separate from the files of the involved patents are GRANTED; and FURTHER ORDERED that the joint motions to terminate the proceedings are GRANTED; and FURTHER ORDERED that the proceedings are TERMINATED. IPR2015-01360 (Patent 8,860,058) IPR2015-01361 (Patent 8,860,058) IPR2015-01378 (Patent 8,659,034) 4 PETITIONER: Jennifer Sklenar Wallace Wu ARNOLD & PORTER, LLP Jennifer.Sklenar@aporter.com Wallace.Wu@aporter.com PATENT OWNER: Peter Dichiara Emily Whelan Andrej Barbic WILMER CUTLER PICKERING HALE AND DORR LLP peter.dichiara@wilmerhale.com emily.whelan@wilmerhale.com andrej.barbic@wilmerhale.com

Honeywell International Inc. v. CREE, INC.