TRW Automotive U.S. LLCv.Magna Electronics Inc.

Patent Trial and Appeal BoardFeb 23, 2016

13749835 (P.T.A.B. Feb. 23, 2016)

Trials@uspto.gov Paper 17 Tel: 571-272-7822 Entered: February 23, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ TRW AUTOMOTIVE US LLC, Petitioner, v. MAGNA ELECTRONICS INC., Patent Owner. _______________ Cases IPR2015-00923 IPR2015-01012 IPR2015-010131 Patent 8,686,840 B2 _______________ Before PHILLIP J. KAUFFMAN, BARRY L. GROSSMAN, and ROBERT J. WEINSCHENK, Administrative Patent Judges. KAUFFMAN, Administrative Patent Judge. ORDER Termination of the Proceeding 35 U.S.C. § 317 and 37 C.F.R. § 42.72 1 We use this caption to indicate that this Decision applies to, and is entered in, each case. The parties are not authorized to use this caption. IPR2015-00923 IPR2015-01012 IPR2015-01013 Patent 8,686,840 B2 2 Pursuant to authorization by the Board, TRW Automotive U.S. LLC (“Petitioner”) and Magna Electronics, Inc. (“Patent Owner”) filed a Joint Motion to Terminate, (Paper 14 (“Joint Motion”)), jointly requesting termination of this inter partes review proceeding and that we treat the submitted settlement agreement (Ex. 1023 (“Settlement Agreement”)) as “business confidential.”2 Under 35 U.S.C. § 317(a), an inter partes review proceeding shall be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner, unless the Patent and Trademark Office has decided the merits of the proceeding before the request for termination is filed. The Board has not decided the merits of this case. Thus, this proceeding is eligible for termination. Furthermore, under 35 U.S.C. § 317(a), “[i]f no petitioner remains in the inter partes review, the Office may terminate the review or proceed to a final written decision under section 318(a).” Petitioner is the sole petitioner in this review. Under 35 U.S.C. § 317(b), any agreement or understanding between the Patent Owner and a Petitioner, including any collateral agreements referred to in such agreement or understanding, made in connection with, or in contemplation of, the termination of the proceeding shall be in writing, and a true copy of such agreement or understanding shall be filed in the Office. Patent Owner and Petitioner state in the Joint Motion that the parties have agreed to settle their dispute and have reached a written agreement to terminate this proceeding. Joint Motion 2. In support of the Joint Motion, the parties submitted Exhibit 1023 as 2 Unless otherwise stated, we reference the papers and exhibits of IPR2015-00923. The other proceedings contain similar fillings. IPR2015-00923 IPR2015-01012 IPR2015-01013 Patent 8,686,840 B2 3 evidence of their agreement. The parties also represent that Exhibit 1023 is a true and correct copy of the agreement and is filed in accordance with 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), and thus represent that there are no collateral agreements or understandings in connection with, or in contemplation of, the termination of this proceeding. Id. Upon consideration of the facts in the case before us, we grant the Joint Motion and terminate this proceeding as to both Petitioner and Patent Owner without rendering a final written decision. 37 C.F.R. § 42.72. We also grant the joint request to maintain the Settlement Agreement as business confidential in accordance with 37 C.F.R. § 42.74(c). ORDER Accordingly, it is: ORDERED that the Joint Motion to Terminate this proceeding is granted and, accordingly, this proceeding is hereby terminated; and FURTHER ORDERED that the parties’ joint request that the agreement (Ex. 1023) submitted in support of the Joint Motion be treated as business confidential information, to be kept separate from the file of U.S. Patent No.8,686,840 B2, and made available only under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is granted. IPR2015-00923 IPR2015-01012 IPR2015-01013 Patent 8,686,840 B2 4 For PETITIONER: Jon Trembath Timothy K. Sendek Allan Sternstein A. Justin Poplin Douglas W. Link LATHROP & GAGE LLP jtrembath@lathropgage.com tsendek@lathropgage.com asternstein@lathropgage.com jpoplin@@lathropgage.com dlink@lathropgage.com For PATENT OWNER: David K.S. Cornwell Mark W. Rygiel STERNE, KESSLER, GOLDSTEIN & FOX PLLC davidc-ptab@skgf.com mrygiel-ptab@skgf.com Timothy A. Flory Terence J. Linn GARDNER, LINN, BUCKHART & FLORY, LLP flory@glbf.com linn@glbf.com

TRW Automotive U.S. LLC v. Magna Electronics Inc.