Micro Motion Inc.v.Schneider Electric SA

Patent Trial and Appeal Board

Apr 1, 2015

09931057 (P.T.A.B. Apr. 1, 2015)

Trials@uspto.gov Paper 42
571-272-7822 Entered: April 1, 2015
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

MICRO MOTION, INC.,
Petitioner,

v.

INVENSYS SYSTEMS, INC.,
Patent Owner.
____________

Case IPR2014-00390
Patent 6,754,594 B2

Before WILLIAM V. SAINDON, MICHAEL R. ZECHER, and
JENNIFER M. MEYER, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

DECISION
Termination of the Proceeding after Institution
37 C.F.R. § 42.72
IPR2014-00390
Patent 6,754,594 B2

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I. DISCUSSION
On March 24, 2015, the parties filed a Joint Motion to Terminate this
proceeding, in which they request that their settlement agreement be treated
as business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R.
§ 42.74(c). Paper 41, “Joint Mot.” The parties also filed a true copy of their
written settlement agreement under 37 C.F.R. § 42.74(b). Ex. 1080. For the
reasons discussed below, the Joint Motion to Terminate and the request to
treat the settlement agreement as business confidential information are
granted.
In the Joint Motion to Terminate, the parties indicate that termination
of this proceeding is appropriate because they have reached an agreement
regarding all of their disputes involving U.S. Patent No. 6,754,594 B2 (“the
’594 patent”). Joint Mot. 1–2. The parties also indicate that their settlement
includes dismissing the co-pending district court case involving the ’594
patent, as well as terminating six other co-pending inter partes reviews
(“IPRs”) between the parties. Id. at 1, 4. The parties represent that there are
no other related district court cases involving the ’594 patent or the patents
involved in the co-pending IPRs. Id. at 5.
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
parties indicate that, although a Decision to Institute was entered on August
4, 2014 (Paper 16), we have not rendered a Final Decision on the merits.
Joint Mot. 2. The parties further indicate that the oral hearing originally
IPR2014-00390
Patent 6,754,594 B2

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scheduled for March 12, 2015, was cancelled so that the Joint Motion to
Terminate could be filed and considered by the panel. Id.
The parties contend that maintaining this proceeding would be
contrary to public policy and would discourage future settlements by
removing significant motivations for settlement—namely, eliminating
litigation risk by resolving the parties’ disputes and ending the pending
proceedings between them, and conserving judicial resources. Joint Mot. 5–
6. In view of the circumstances presented in this case, we agree. Indeed,
there are strong public policy reasons to favor settlement between the parties
to a proceeding. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
48,768 (Aug. 14, 2012). When, as here, we have not rendered a Final
Decision on the merits, we generally expect that the proceeding will
terminate after the filing of a settlement agreement. See id.
As the parties have filed their written settlement agreement as to this
proceeding and the co-pending IPRs, and the co-pending district court case
was dismissed as part of the settlement, we determine that it is appropriate to
terminate this proceeding without rendering a Final Decision as to the
patentability of claims 1, 3, 4, 6, 8–10, 13, and 14 of the ’594 patent.

II. ORDER
Accordingly, it is:
ORDERED that the parties’ request that the settlement agreement
(Ex. 1080) be treated as business confidential information under 35 U.S.C.
§ 317(b) and 37 C.F.R. § 42.74(c) is GRANTED; and
FURTHER ORDERED that the parties’ Joint Motion to Terminate
this proceeding is GRANTED, and this proceeding is hereby terminated.
IPR2014-00390
Patent 6,754,594 B2

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For PETITIONER:

Andrew S. Baluch
Jeffrey N. Costakos
Angela Murch
Michelle Moran
Linda Hansen
Kadie Jelenchick
FOLEY & LARDNER LLP
abaluch@foley.com
jcostakos@foley.com
amurch@foley.com
mmoran@foley.com
lhansen@foley.com
kjelenchick@foley.com

For PATENT OWNER:
Jeffrey L. Johnson
James M. Heintz
DLA PIPER LLP (US)
Jeffrey.johnson@dlapiper.com
Invensys_Micro_IPR@dlapiper.com