Michigan Motor Technologies LLC

Patent Trials and Appeals BoardMar 22, 2021

IPR2020-00068 (P.T.A.B. Mar. 22, 2021)

Trials@uspto.gov Paper 37 Tel: 571-272-7822 Date: March 22, 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. ____________ IPR2020-00068 Patent 6,757,149 B2 ____________ Before NEIL T. POWELL, SCOTT B. HOWARD, and STEPHEN E. BELISLE, Administrative Patent Judges. BELISLE, Administrative Patent Judge. TERMINATION Due to Settlement After Institution of Trial 35 U.S.C. § 317; 37 C.F.R. § 42.74 IPR2020-00068 Patent 6,757,149 B2 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 35. 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 36). 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 8. 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 have reached an agreement to request termination of this inter partes review. Paper 35, 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 36. We determine that it is appropriate to treat the Confidential Agreement as business confidential information, and to IPR2020-00068 Patent 6,757,149 B2 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 36, 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. IPR2020-00068 Patent 6,757,149 B2 4 PETITIONER: Michael D. Specht Jason A. Fitzsimmons Daniel E. Yonan STERNE, KESSLER, GOLDSTEIN & FOX, P.L.L.C. mspecht-ptab@sternekessler.com jfitzsimmons-ptab@sternekessler.com dyonan-ptab@sternekessler.com PATENT OWNER: Timothy Devlin Robyn Williams Robert Westerlund DEVLIN LAW FIRM LLC td-ptab@devlinlawfirm.com rwilliams@devlinlawfirm.com robertwesterlund@icloud.com