Garmin International, Inc. and Garmin USA Inc.v.Cuozzo Speed Technologies LLC,

Patent Trial and Appeal Board

Feb 12, 2014

10100378 (P.T.A.B. Feb. 12, 2014)

Trial@uspto.gov Paper 19
571-272-7822 Entered: February 12, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

GARMIN INTERNATIONAL, INC. and
GARMIN USA INC.,
Petitioner,

v.

CUOZZO SPEED TECHNOLOGIES LLC,
Patent Owner.

Case IPR2013-00373
Patent 6,778,074

Before JAMESON LEE, MICHAEL P. TIERNEY, and
JOSIAH C. COCKS, Administrative Patent Judges.

LEE, Administrative Patent Judge.

JUDGMENT
Termination of Proceeding
37 C.F.R. § 42.73

On January 23, 2014, the parties filed a joint motion to terminate this inter
partes review with respect to the petitioner (Garmin International, Inc. and Garmin
USA Inc., collectively “Garmin”). Paper 16. With the joint motion, the parties
Case IPR2013-00373
Patent 6,778,074

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filed a copy of their written settlement agreement covering Patent 6,778,074
involved in this inter partes review. Ex. 1116. The parties also filed, on January
23, 2014, a joint request to have their settlement agreement treated as confidential
business information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
Paper 17.
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.” The requirement for
terminating review with respect to Garmin, as petitioner, is met. The Board
instituted trial on December 18, 2013 (Paper 12), and has not yet, in this
proceeding, rendered a decision on the merits with respect to the patentability of
any involved claim. Also under 35 U.S.C. § 317(a), “If 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).” Garmin is the sole petitioner. The Board
has discretion to terminate this review with respect to the patent owner (“Cuozzo”).
Garmin takes no position on whether this review should be terminated with
respect to Cuozzo. However, Garmin represents that it will no longer participate
even if the Board does not terminate this review. That means it will file no reply to
Cuozzo’s patent owner response or an opposition to Cuozzo’s motion to amend
claims, if any. It also will not be conducting any cross examination of Cuozzo’s
witnesses, if the patent owner response relies on declaration testimony.
The joint motion indicates that in co-pending district court litigations
involving Patent 6,778,074, Cuozzo will seek to have Garmin International, Inc.
Case IPR2013-00373
Patent 6,778,074

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and Garmin USA, Inc. dismissed as defendants. The joint motion also indicates
that other defendants will remain in these related litigations. On this record, the
other defendants have not filed a petition for inter partes review of Patent
6,778,074, and there is no pending motion by any third party for joinder of another
inter partes review with this review.
Cuozzo, by way of statements in Appendix I submitted with the joint
motion, seeks termination of this proceeding also as to Cuozzo. According to
Cuozzo, continuing this trial without the participation of Garmin, at this early stage
where Cuozzo has not yet submitted its patent owner response, is contrary to the
“adjudicative model” Congress envisioned for post-grant proceedings under the
America Invents Act. Also, Cuozzo also asserts that continuing the proceeding
with respect to Cuozzo undermines the Congressional goal of speedy dispute
resolution, because a patent owner would have little reason, if any, to enter into a
settlement with a petitioner.
The Board determines that in the particular circumstances of this case it is
appropriate to terminate review both as to petitioner Garmin and patent owner
Cuozzo without rendering a final written decision See 35 U.S.C. § 317(a);
37 C.F.R. § 42.72.
It is
ORDERED that the joint motion to terminate this proceeding with respect to
Garmin GRANTED;
FURTHER ORDERED that the Board exercises its discretion to terminate
this proceeding also with respect to Cuozzo;
Case IPR2013-00373
Patent 6,778,074

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FURTHER ORDERED that this inter partes review is hereby terminated as
to all parties including both petitioner Garmin International Inc. and Garmin USA
Inc., and patent owner Cuozzo Speed Technologies LLC; and
FURTHER ORDERED that the parties’s joint request to have their
settlement agreement (Exhibit 1116) treated as business confidential information
under the 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is GRANTED.

For PETITIONER
Jennifer Bailey
Jason Mudd
jcb@hoveywilliams.com
jason.mudd@eriseip.com

For PATENT OWNER

John R. Kasha
Kelly L. Kasha
john.kasha@kashalaw.com
Kelly.kasha@kashalaw.com