Nissan North America, Inc.v.Diamond Coating Technologies, LLC

Patent Trial and Appeal Board

Mar 9, 2015

08895999 (P.T.A.B. Mar. 9, 2015)

Trials@uspto.gov Paper: 17
571-272-7822 Entered: March 9, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

NISSAN NORTH AMERICA, INC. and
HITACHI AUTOMOTIVE SYSTEMS, LTD.,
Petitioner,

v.

DIAMOND COATING TECHNOLOGIES, LLC,
Patent Owner.
____________

Case IPR2014-01545 (Patent 5,629,086)
Case IPR2014-01547 (Patent 6,071,103)
____________

Before CHRISTOPHER L. CRUMBLEY, JO-ANNE M. KOKOSKI, and
BRIAN P. MURPHY, Administrative Patent Judges.

CRUMBLEY, Administrative Patent Judge.

JUDGMENT
Termination of the Proceeding
37 C.F.R. § 42.72

On March 4, 2015, pursuant to Board authorization, Petitioner Nissan
North America, Inc. and Hitachi Automotive Systems, Ltd. (collectively,
IPR2014-01545 (Patent 5,629,086)
IPR2014-01547 (Patent 6,071,103)

2
“Petitioner”) and Patent Owner Diamond Coating Technologies, LLC, filed
Joint Motions to Terminate these two related inter partes reviews. Paper
15.1 With the Joint Motions, the parties filed copies of their written
settlement agreement covering various matters involving the patents at issue
in these proceedings. Ex. 2005. The parties concurrently filed Joint
Requests to have the settlement agreement treated as confidential business
information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 16.
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 these
proceedings, the Board has not determined whether to institute trial, and has
not yet reached a decision on the merits with respect to the patentability of
any involved claim. Accordingly, the requirement for terminating the
reviews with respect to Nissan and Hitachi, as Petitioner, is met.
Furthermore, “[i]f no petitioner remains in the inter partes review, the
Office may terminate the review or proceed to a final written decision under
section 318(a).” 35 U.S.C. § 317(a). The Board, therefore, has discretion to
terminate these reviews with respect to Patent Owner. In their Joint
Motions, the parties note the early stage of the proceedings, the fact that no
motions are pending, and the parties’ agreement to end their dispute in
District Court as to the subject patents. Paper 15, 3–4.
Based on the present record, we determine that it is appropriate to
terminate these inter partes reviews as to both Petitioner and Patent Owner

1 All Papers and Exhibits cited herein share the same docket number in
IPR2014-01545 and IPR2014-01547.
IPR2014-01545 (Patent 5,629,086)
IPR2014-01547 (Patent 6,071,103)

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without rendering a final written decision. See 35 U.S.C. § 317(a); 37
C.F.R. § 42.72.

In light of the foregoing, it is
ORDERED that the parties’ Joint Requests (Paper 16) to have their
settlement agreement (Ex. 2005) treated as business confidential
information, to be kept separate from the patent file, are granted;
FURTHER ORDERED that the Joint Motions to Terminate these
proceedings (Paper 15) are granted; and
FURTHER ORDERED that these inter partes reviews are hereby
terminated.

IPR2014-01545 (Patent 5,629,086)
IPR2014-01547 (Patent 6,071,103)

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FOR PETITIONER:
Reginald J. Hill
Chad J. Ray
JENNER & BLOCK
rhill@jenner.com
cray@jenner.com

Pavan K. Agarwal
Michael R. Houston
FOLEY & LARDNER LLP
pagarwal@foley.com
mhouston@foley.com

FOR PATENT OWNER:
Kenneth J. Weatherwax
Parham Hendifar
GOLDBERG, LOWENSTEIN & WEATHERWAX LLP
weatherwax@glwllp.com
hendifar@glwllp.com