MONUMENT PEAK VENTURES, LLC

Patent Trials and Appeals BoardAug 28, 2020

IPR2019-01472 (P.T.A.B. Aug. 28, 2020)

Trials@uspto.gov Paper 16 571-272-7822 Date: August 28, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ ROBERT BOSCH LLC, Petitioner, v. MONUMENT PEAK VENTURES, LLC, Patent Owner. ____________ IPR2019-01472 (Patent 6,282,317 B1); IPR2019-01473 (Patent 6,654,507 B2); IPR2019-01474 (Patent 6,654,506 B1); IPR2019-01475 (Patent 7,035,461 B2); IPR2019-01476 (Patent 7,148,908 B2)1 ____________ Before JONI Y. CHANG, MICHAEL R. ZECHER, MELISSA A. HAAPALA, and JULIET MITCHELL DIRBA, Administrative Patent Judges. 2 CHANG, Administrative Patent Judge. TERMINATION Due to Settlement After Institution of Trial 35 U.S.C. § 317; 37 C.F.R. § 42.74 1 This Order is being filed in each proceeding listed in the caption. The parties, however, are not authorized to use this style of filing in subsequent papers, without prior authorization. 2 This is not an expanded panel of the Board. The panel for IPR2019-01472, IPR2019-01473, and IPR2019-01474 includes Judges Chang, Zecher, and Dirba; the panel for IPR2019-01475 includes Judges Chang, Haapala, and Dirba; and the panel for IPR2019-01476 includes Judges Chang, Zecher, and Haapala. IPR2019-01472 (Patent 6,282,317 B1); IPR2019-01473 (Patent 6,654,507 B2); IPR2019-01474 (Patent 6,654,506 B1); IPR2019-01475 (Patent 7,035,461 B2); IPR2019-01476 (Patent 7,148,908 B2) 2 In each instant proceeding, Petitioner and Patent Owner jointly move to terminate inter parte review in light of their settlement that resolves their dispute regarding the patents at issue. Paper 12 (“Mot.”).3 The parties also filed a true copy of their written settlement agreement in connection with the termination as required by 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), in each instant proceeding. Ex. 1012. Pursuant to 37 C.F.R. § 42.74(c), the parties additionally filed a joint request to treat the Settlement Agreement as business confidential information kept separate from the file of the involved patent, in each instant proceeding. Paper 14. Generally, the Board expects that a proceeding will terminate after the filing of a settlement agreement. See Consolidated Trial Practice Guide4 at 86; see also 84 Fed. Reg. 64,280 (Nov. 21, 2019). Here, the parties indicate that their Settlement Agreement completely resolves the controversy between the parties relating to the involved patents. Mot. 3. Although the instant inter partes reviews have been instituted, these proceedings are still in the briefing stage. We have not yet held an oral hearing and have not entered a final written decision in any of these proceedings. Upon review of the procedural posture of these proceedings and the facts before us, we determine that the parties’ requests have merit and that it is appropriate to terminate these proceedings and enter judgment without 3 For purposes of expediency, we refer to the papers and exhibits filed in IPR2019-01472. Similar papers and exhibits were filed in IPR2019-01473, IPR2019-01474, IPR2019-01475, and IPR2019-01476. 4 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated IPR2019-01472 (Patent 6,282,317 B1); IPR2019-01473 (Patent 6,654,507 B2); IPR2019-01474 (Patent 6,654,506 B1); IPR2019-01475 (Patent 7,035,461 B2); IPR2019-01476 (Patent 7,148,908 B2) 3 rendering a final written decision in each instant proceeding. See 35 U.S.C. § 317(a); 37 C.F.R. §§ 42.2, 42.72. In consideration of the foregoing, it is hereby ORDERED that the Joint Motions to Terminate filed in these proceedings are granted; and FURTHER ORDERED that the Joint Requests to File Settlement Agreement as Business Confidential Information and to keep such settlement agreement separate from the patent files, and to make it available only to Federal Government agencies on written request, or to any person on a showing of good cause, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), are granted. IPR2019-01472 (Patent 6,282,317 B1); IPR2019-01473 (Patent 6,654,507 B2); IPR2019-01474 (Patent 6,654,506 B1); IPR2019-01475 (Patent 7,035,461 B2); IPR2019-01476 (Patent 7,148,908 B2) 4 For PETITIONER: Lionel Lavenue Cory Bell Razi Safi FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP lionel.lavenue@finnegan.com cory.bell@finnegan.com razi.safi@finnegan.com For PATENT OWNER: Tarek Fahmi Jonathan Tsao ASCENDA LAW GROUP, PC tarek.fahmi@ascendalaw.com jonathan.tsao@ascendalaw.com