Michigan Motor Technologies LLC

Patent Trials and Appeals Board

Mar 30, 2021

IPR2019-01645 (P.T.A.B. Mar. 30, 2021)

Trials@uspto.gov Paper 23 Tel: 571-272-7822 Date: March 30, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ VOLKSWAGEN GROUP OF AMERICA, INC., Petitioner, v. MICHIGAN MOTOR TECHNOLOGIES LLC, Patent Owner. ____________ IPR2019-01645 Patent 6,345,604 B1 ____________ Before NEIL T. POWELL, MITCHELL G. WEATHERLY, and STEPHEN E. BELISLE, Administrative Patent Judges. POWELL, Administrative Patent Judge. TERMINATION Due to Settlement After Institution of Trial 35 U.S.C. § 317; 37 C.F.R. § 42.74 IPR2019-01645 Patent 6,345,604 B1 2 On March 19, 2021, with Board authorization, Petitioner and Patent Owner filed a joint motion to dismiss the petition and terminate the above- captioned proceeding. Paper 21. Along with the motion, the parties filed a copy of a Confidential Agreement (Ex. 1100), as well as a joint request to treat the Confidential Agreement as business confidential information (Paper 22). See 37 C.F.R. § 42.74(c) (a party to a settlement may request that the settlement agreement be treated as business confidential and be kept separate from the patent file). 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 the patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” It is also provided in 35 U.S.C. § 317(a) that if no petitioner remains, the Office may terminate the inter partes review. In this case, the Board issued a decision to institute inter partes review. Paper 10. However, the Board has not yet decided the merits of the proceeding or entered a final written decision. In the joint motion, the parties state that they have settled their dispute and they jointly request termination of this inter partes review. Paper 21, 1. Accordingly, in the circumstances present here, we determine that it is appropriate to terminate the proceeding. 37 C.F.R. § 42.71(a). This Order does not constitute a final written decision pursuant to 35 U.S.C. § 318(a). The parties also ask that the Confidential Agreement be treated as business confidential information and be kept separate from the file of the challenged patents. Paper 22. We determine that it is appropriate to treat the Confidential Agreement as business confidential information, and to IPR2019-01645 Patent 6,345,604 B1 3 keep that document separate from the files of the challenged patents, pursuant to 37 C.F.R. § 42.74(c). The parties further ask the Board to order that, “in the event a person or entity makes a written request, as stated in 37 C.F.R. § 42.74(c)(1)-(2), for access to the [Confidential Agreement], that any such written request be served upon the parties on the day the written request is provided to the Board.” Paper 22, 1. The statutory and regulatory provisions governing access to such settlement agreements stand on their own, and therefore, we deny the parties’ request here. For the foregoing reasons, it is: ORDERED that the joint motion is granted and this proceeding is terminated with respect to Petitioner and Patent Owner; FURTHER ORDERED that the joint request that the Confidential Agreement (Ex. 1100) be treated as business confidential information, to be kept separate from the patent file, is granted in this proceeding; and FURTHER ORDERED that the joint request that the Board order that, in the event a person or entity makes a written request for access to the Confidential Agreement, that any such written request be served upon the parties on the day the written request is provided to the Board, is denied in this proceeding. IPR2019-01645 Patent 6,345,604 B1 4 PETITIONER: Michael Specht Jason Fitzsimmons Daniel Yonan Christopher O’Brien STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. mspecht-ptab@sternekessler.com jfitzsimmons-ptab@sternekessler.com dyonan-ptab@sternekessler.com cobrien-ptab@sternekessler.com PATENT OWNER: Timothy Devlin DEVLIN LAW FIRM LLC tdevlin@devlinlawfirm.com Robert Westerlund robertwesterlund@icloud.com