Quartz Auto Technologies LLC

Patent Trials and Appeals Board

Dec 3, 2020

IPR2020-01118 (P.T.A.B. Dec. 3, 2020)

Trials@uspto.gov Paper 13
571-272-7822 Entered: December 3, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

UNIFIED PATENTS, LLC.,
Petitioner,
v.
QUARTZ AUTO TECHNOLOGIES, LLC,
Patent Owner.

____________

Case IPR2020-01118
Patent 7,370,085 B2
____________

Before KEN B. BARRETT, LYNNE H. BROWNE, and
MIRIAM L. QUINN, Administrative Patent Judges.

QUINN, Administrative Patent Judge.

ORDER
Granting Motion to Withdraw Petition and Dismissal Prior to Institution of
Trial
37 C.F.R. § 42.5(a), 42.73(a)

IPR2020-01118
Patent 7,370,085 B2

2
I. INTRODUCTION
Unified Patents, LLC., “Petitioner” or “Unified,” filed a Petition
requesting inter partes review of claims 1−23 of U.S. Patent No. 7,370,085
B2 ( “the ’085 patent”). Paper 1 (“Pet.”). Quartz Auto Technologies, LLC
(“Patent Owner”) filed a Preliminary Response. Paper 7. We authorized the
parties to file a Reply (by Petitioner) and a Sur-Reply (by Patent Owner) to
address a real party-in-interest issue and the exercise of discretion to deny
the petition under 35 U.S.C. § 314. Paper 11 (“Order”). Subsequently, the
parties requested, and we authorized, the filing of a Joint Motion to Dismiss
and Terminate this Proceeding. Paper 12 (“Mot. or “Motion”). The Motion
states that Unified desires to voluntarily withdraw the Petition and requests
that we terminate the proceeding accordingly. We grant the Motion for the
reasons that follow.
First, the Board has authority to dismiss a petition upon petitioner’s
request to withdraw the petition. The Motion explains that the Board has
discretion to grant any petition or motion under 37 C.F.R. § 42.71(a) and
§ 42.5(a). Mot. 3. The grant of authority under § 42.71(a) refers to the
discretion of the Board to decide filed motions and the petition in any order.
Thus, our rules permit us to grant the Motion and dismiss the petition before
we decide whether to grant or deny the Petition. As for 37 C.F.R. § 42.5(a),
the rule states that the Board may “determine a proper course of conduct in a
proceeding for any situation not specifically covered by this part and may
enter non-final orders to administer the proceeding.” Because Petitioner’s
request is a final order in the administration (e.g., a termination) of this
proceeding, § 42.5(a) has limited applicability to the circumstances before
IPR2020-01118
Patent 7,370,085 B2

3
us. That is, we may determine that the Motion must present good cause for
the termination of the proceeding under § 42.5(a), but we may only enter a
“non-final” order under that rule.
Nevertheless, another Board rule allows for us to enter a final order1
in this proceeding. Although our rule on termination expressly refers to an
instituted proceeding or trial, we have broad authority to render judgment at
the request of a party. See, e.g., 37 C.F.R. § 42.72 (addressing termination
of a trial, which is an instituted proceeding, before issuing a final written
decision). Specifically, 37 C.F.R. § 42.73(b) allows for a party to “request
judgment against itself at any time during a proceeding.” And the definition
of “judgment,” according to the Board’s rules, includes “a termination of a
proceeding.” Id. § 42.2. Therefore, under Rule 42.73(b), we may enter a
final order granting Petitioner’s request to voluntarily withdraw the petition
as a request for judgment or termination.
Second, Petitioner has shown good cause for its request. Showing
good cause, for a voluntary petition withdrawal, may involve providing a
reasonable explanation for the change of circumstances and the showing of
efficient use of resources by the parties and the Board. Here, as for the
explanation, Petitioner asserts that it “seeks to reallocate its budget and
resources, including in light of COVID-19 related budget pressures.”
Mot. 3. As for use of resources, the Motion states that “[n]either party

1 According to 37 C.F.R. § 42.2, a “decision is final only if it disposes of all
necessary issues with regard to the party seeking judicial review, and does
not indicate that further action is required.”
IPR2020-01118
Patent 7,370,085 B2

4
wishes to spend additional resources on this proceeding.” Id. The Motion
further states that “Patent Owner would not be prejudiced by dismissal and
the Board’s subsequent termination of this matter.” Id. And finally, the
Motion provides “an added reassurance” that “Petitioner has confirmed to
Patent Owner telephonically, and confirms to the Board here, that it will not
file another challenge against any patent [that] Patent Owner has asserted in
district court or on any patents related to those patents.” Id. at 4–5
In sum, the Motion explains sufficiently the reasons for the request to
withdraw the Petition. And the Motion further explains sufficiently that the
Board and the parties will conserve resources because, aside from the
obvious results of termination of the instant proceeding, Petitioner confirms
that it will not file further challenges involving Patent Owner’s related
patents currently involved in district court litigation.
CONCLUSION
This proceeding is at the early stages before institution and Petitioner
has shown good cause for its request to withdraw the Petition. Therefore,
we grant the Motion and terminate IPR2020-01118.
II. ORDER
Accordingly, it is hereby:
ORDERED that Petitioner’s Motion to Dismiss and Terminate the
proceeding is granted; and
FURTHER ORDERED that IPR2020-01118 is hereby terminated.

IPR2020-01118
Patent 7,370,085 B2

5
For PETITIONER:
Ellyar Barazesh
Jessica L.A. Marks
Alyssa J. Holtslander
Roshan Mansinghani
UNIFIED PATENTS, LLC.
ellyar@unifiedpatents.com
jessica@unifiedpatents.com
alyssa@unifiedpatents.com
roshan@inifiedpatents.com

For PATENT OWNER:

Nicholas T. Peters
David Gosse
Timothy Maloney
FITCH EVEN
ntpete@fitcheven.com
dgosse@fitcheven.com
tpmalo@fitcheven.com