Iron Dome LLCv.e-Watch, Inc.

Patent Trial and Appeal Board

Mar 6, 2015

10336470 (P.T.A.B. Mar. 6, 2015)

Trials@uspto.gov Paper 45
571-272-7822 Entered: March 6, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

IRON DOME LLC,
Petitioner,

v.

E-WATCH, INC.,
Patent Owner.

Case IPR2014-00439
Patent 7,365,871

Before JAMESON LEE, GREGG. I. ANDERSON, and
MATTHEW R. CLEMENTS, Administrative Patent Judges.

CLEMENTS, Administrative Patent Judge.

DECISION
Joint Motion to Terminate
37 C.F.R. § 42.72
IPR2014-00439
Patent 7,365,871

2
On February 24, 2015, Iron Dome LLC (“Petitioner”) and e-Watch,
Inc. (“Patent Owner”) filed a joint motion to terminate the trial proceedings
under 35 U.S.C. § 317(a). Paper 41. Along with the motion, the parties
filed a Joint Request to File True Copy of Agreement Resolving Dispute as
Business Confidential Information Pursuant to 35 U.S.C. § 317 (Paper 40), a
copy of a document they described as the written settlement agreement
(Exhibit 2041), and a separate exhibit containing Patent Owner’s
Explanation re Termination (Exhibit 2042).
On February 26, 2015, we expunged the joint motion to terminate and
authorized the parties to re-file a revised joint motion to terminate that
incorporates the arguments from Exhibit 2042. Paper 42.
On February 26, 2015, the parties filed a revised joint motion to
terminate the trial proceedings under 35 U.S.C. § 317(a). Paper 43 (“Mot.”).
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.” In their
joint motion, the parties request termination of the instant proceeding
because they have settled their dispute and have reached agreement to
terminate this inter partes review, and because the Office has not yet
decided the merits of the proceeding. Mot. 2–3. Specifically, the parties
state that, “[b]ecause the parties are jointly requesting termination and the
Office has not yet ‘decided the merits of the proceeding before the request
for termination is filed,’ the USPTO is required to terminate the inter partes
review with respect to Petitioner.” Id. at 3.
IPR2014-00439
Patent 7,365,871

3
The parties also indicate that nine litigations involving the ’871 patent
are pending, one is stayed, and one is terminated. Id. at 4–6. The parties
note, however, that “none of these Defendants have sought to join this IPR
proceeding. In addition, none of these Defendants have cited the same
ground of rejection as cited in this IPR proceeding in their IPR petitions
related to the '871 patent.” Id. at 4.
The parties are reminded that the Board is not a party to the settlement
and that, even if the parties agree to settle any issue in a proceeding, the
Board may independently determine any question of patentability. 37 C.F.R
§ 42.74(a). Generally, however, the Board expects that a proceeding will
terminate after the filing of a settlement agreement. See, e.g., Office Patent
Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). We
have not yet decided the merits of this proceeding. For example, the oral
argument has not been held. The Board is persuaded that, under these
circumstances, it is appropriate to terminate this proceeding as to both
Petitioner and Patent Owner without rendering a final written decision. 37
C.F.R. § 42.72.
ORDER
Accordingly, it is:
ORDERED that the revised joint motion to terminate this proceeding
is GRANTED and this proceeding is hereby terminated as to both Petitioner
and Patent Owner; and
FURTHER ORDERED that the parties’ joint request that the
settlement agreement (Exhibit 2041) be treated as business confidential
information, kept separate from the file of the involved patent, and made
available only to Federal Government agencies on written request, or to any
IPR2014-00439
Patent 7,365,871

4
person on a showing of good cause, under the provisions of 35 U.S.C.
§ 317(b) and 37 C.F.R. § 42.74(c), is GRANTED; and
FURTHER ORDERED that the settlement agreement (Exhibit 2041)
is changed to “Board Only” in PRPS.
IPR2014-00439
Patent 7,365,871

5
For PETITIONER:

Steven Yu
ROZMED LLC
syu@patent-intercept.com

For PATENT OWNER:

Robert C. Curfiss
bob@curfiss.com

and

David O. Simmons
IVC Patent Agency
dsimmons1@sbcglobal.net