Michigan Motor Technologies LLC

Patent Trials and Appeals Board

Mar 31, 2021

IPR2020-00453 (P.T.A.B. Mar. 31, 2021)

Trials@uspto.gov Paper 23
571-272-7822 Entered: March 31, 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.

IPR2020-00453
Patent 6,571,157 B1

Before NEIL T. POWELL, BARBARA A. PARVIS, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOWARD, Administrative Patent Judge.

TERMINATION
Due to Settlement After Institution of Trial and
Granting Joint Request to Treat Settlement Agreement as
Business Confidential Information
35 U.S.C. § 317; 37 C.F.R. § 42.74

IPR2020-00453
Patent 6,571,157 B1

2

I. INTRODUCTION
Volkswagen Group of America, Inc. (“Petitioner”) and Michigan
Motor Technologies LLC (“Patent Owner”), (collectively “the Parties”)
request that the above-identified inter partes review proceeding be
terminated pursuant to a settlement. With our authorization, the Parties filed
a Joint Motion to Terminate the above-identified proceeding (“Joint
Motion”). Paper 21.
The Parties also filed a Settlement Agreement (Ex. 1100, “Settlement
Agreement”) and a joint request to treat the settlement agreement as business
confidential information and to keep it separate under 35 U.S.C. § 317(b)
and 37 C.F.R. § 42.74(c) (Paper 22).
II. DISCUSSION
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 in the inter
partes review, the Office may terminate the review.
In the Joint Motion, the Parties represent that they have reached an
agreement to jointly seek termination of this inter partes review proceeding,
that the filed copy of the Settlement Agreement is a true copy, and there are
no other collateral agreements. Joint Motion 1–3. The Parties also represent
that their Settlement Agreement resolves all currently pending Patent Office
and District Court proceedings between the Parties involving U.S. Patent
No. 6,571,157 B1 (“the ’157 patent”). Joint Motion 1–3.

IPR2020-00453
Patent 6,571,157 B1

3

We instituted a trial on the above-identified proceeding on July 22,
2020. Paper 11. We have not yet decided the merits of the proceeding, and
a final written decision has not been entered. Notwithstanding that the
proceeding has moved beyond the preliminary stage, the Parties have
adequately shown that the termination of the proceeding is appropriate.
Under these circumstances, we determine that good cause exists to terminate
the proceeding with respect to the Parties.
The Parties also requested that the Settlement Agreement be treated as
business confidential information and be kept separate from the file of the
’157 patent. Joint Request 1. After reviewing the Settlement Agreement
between the Parties, we find that the Settlement Agreement contains
confidential business information regarding the terms of settlement. We
determine that good cause exists to treat the Settlement Agreement as
business confidential information pursuant to 35 U.S.C. § 317(b) and 37
C.F.R. § 42.74(c).
“The parties further jointly request that the Board 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 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.
This Order does not constitute a final written decision pursuant to 35
U.S.C. § 318(a).
III. ORDER
Accordingly, for the reasons discussed above, it is:
IPR2020-00453
Patent 6,571,157 B1

4

ORDERED that the Joint Motion is granted, and IPR2020-00453 is
terminated with respect to Petitioner and Patent Owner, pursuant to
35 U.S.C. § 317(a) and 37 C.F.R. § 42.72; and
FURTHER ORDERED that the Joint Request is granted, and the
Settlement Agreement shall be kept separate from the file of the ’157 patent,
and made 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).
IPR2020-00453
Patent 6,571,157 B1

5

PETITIONER:
Michael D. Specht
Jason A. Fitzsimmons
Daniel E. Yonan
Graham C. Phero
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
mspecht-ptab@sternekessler.com
jfitzsimmons-ptab@sternekessler.com
dyonan-ptab@sternekessler.com
gphero-ptab@sternekessler.com

PATENT OWNER:
Timothy Devlin
DEVLIN LAW FIRM LLC
tdevlin@devlinlawfirm.com