Michigan Motor Technologies LLCDownload PDFPatent Trials and Appeals BoardMar 31, 2021IPR2020-00453 (P.T.A.B. Mar. 31, 2021) Copy Citation 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 Copy with citationCopy as parenthetical citation