Micro Motion, Inc.v.Schneider Electric SA

Patent Trial and Appeal Board

Mar 31, 2015

11458251 (P.T.A.B. Mar. 31, 2015)

Trials@uspto.gov IPR2014-00167 Paper 52
571-272-7822 IPR2014-00170 Paper 46
IPR2014-00393 Paper 42
Entered: March 31, 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 IPR2014-00167 (US 7,505,854 B2)
Case IPR2014-00170 (US 6,311,136 B1)
Case IPR2014-00393 (US 7,571,062 B2)1
____________

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

SAINDON, Administrative Patent Judge.

DECISION
Termination of the Proceeding after Institution due to Settlement
37 C.F.R. § 42.72

1 For purposes of administrative efficiency, we enter the same Decision in
these three related proceedings.
IPR2014-00167 (US 7,505,854 B2)
IPR2014-00170 (US 6,311,136 B1)
IPR2014-00393 (US 7,571,062 B2)

1

I. DISCUSSION
On March 24, 2015, the parties filed a Joint Motion to Terminate in
each of the proceedings identified above, in which they request that their
settlement agreements 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.”2 The
parties also filed a true copy of their written settlement agreements under
37 C.F.R. § 42.74(b). Ex. 1080. For the reasons discussed below, the Joint
Motions to Terminate and the requests to treat the settlement agreements as
business confidential information are granted.
In the Joint Motions to Terminate, the parties indicate that termination
of these proceedings is appropriate because they have reached an agreement
regarding all of their disputes involving the challenged patents. Joint Mot.
1–2. The parties also indicate that their settlement includes dismissing the
co-pending district court case involving the challenged patents, as well as
terminating four 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 challenged patents 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 a Decision to Institute was entered in each of these

2 Citations in this paper are to those documents filed in Case IPR2014-
00393. Similar citations exist with respect to the Joint Motions to Terminate
in Case IPR2014-00167 (Paper 51) and Case IPR2014-00170 (Paper 45).
IPR2014-00167 (US 7,505,854 B2)
IPR2014-00170 (US 6,311,136 B1)
IPR2014-00393 (US 7,571,062 B2)

2

proceedings, but we have not yet rendered Final Decisions on the merits.
Joint Mot. 2. The parties further indicate that an oral hearing originally
scheduled for March 12, 2015 for IPR2014-00393 was canceled so that the
Joint Motion to Terminate could be filed and considered by the panel.3 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 Final
Decisions on the merits, we generally expect that proceedings will terminate
after the filing of a settlement agreement. See id.
As the parties have filed their written settlement agreement as to these
proceedings 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 these proceedings without rendering Final Decisions as to the
patentability of the challenged claims.

3 In IPR2014-00167 and IPR2014-00170, oral hearings were held January
15, 2015.
IPR2014-00167 (US 7,505,854 B2)
IPR2014-00170 (US 6,311,136 B1)
IPR2014-00393 (US 7,571,062 B2)

3

II. ORDER
Accordingly, it is:
ORDERED that the parties’ requests that the settlement agreement
(IPR2014-00167—Ex. 1169; IPR2014-00170—Ex. 1169; IPR2014-00393—
Ex. 1080) be treated as business confidential information under 35 U.S.C.
§ 317(b) and 37 C.F.R. § 42.74(c) are GRANTED; and
ORDERED that the parties’ Joint Motions to Terminate IPR2014-
00167, IPR2014-00170, and IPR2014-00393 are GRANTED, and each of
these proceedings is hereby terminated.

For PETITIONER:

Andrew S. Baluch
Jeffrey N. Costakos
Foley & Lardner LLP
abaluch@foley.com
jcostakos@foley.com

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