`Tel: 571-272-7822
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` Paper 15
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` Entered: January 13, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`GARMIN INTERNATIONAL, INC.
`and GARMIN USA, INC.
`Petitioner
`
`v.
`
`CUOZZO SPEED TECHNOLOGIES LLC
`Patent Owner
`_______________
`
`IPR2013-00373
`Patent 6,778,074
`_______________
`
`Before JAMESON LEE and JOSIAH C. COCKS,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`IPR2013-00373
`Patent 6,778,074
`
`
`Introduction
`
`On January 9, 2014, an initial telephone conference call was held between
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`respective counsel for the parties and Judges Lee and Cocks. Neither party filed a
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`list of proposed motions. During the conference call, counsel for the parties asked
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`for authorization to file a joint motion to terminate this proceeding. They indicated
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`that Petitioner (“Garmin”) and Patent Owner (“Cuozzo”) have settled.
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`Discussion
`
`Generally, the Board expects that a proceeding will terminate after the filing
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`of a settlement agreement. Office Patent Trial Practice Guide, 77 Fed. Reg.
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`48,756, 48,768 (Aug. 14, 2012). The rule governing settlement indicates that any
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`agreement between the parties made in connection with, or in contemplation of, the
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`termination of a proceeding1 shall be in writing and filed with the Board.
`
`37 C.F.R. § 42.74.
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`The Board indicated that the filing of a joint motion to terminate this
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`proceeding is authorized. The joint motion must include an explanation as to why
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`termination is appropriate in this proceeding. For example, the joint motion should
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`include a section discussing the effect of termination on the public’s interest. The
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`joint motion should explain the status of Garmin in any related district court action
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`in which infringement of the involved patent in this proceeding has been alleged.
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`The joint motion also should identify all codefendants in any related district court
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`action in which infringement of the involved patent in this proceeding has been
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`alleged, and explain the status of each such codefendant in each such action.
`
`
`1 A “proceeding” includes a preliminary proceeding. 37 C.F.R. § 42.2.
`2
`
`
`
`
`
`IPR2013-00373
`Patent 6,778,074
`
`
`The joint motion to terminate must be accompanied by a true copy of the
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`settlement agreement as required by 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b).
`
`A redacted version of the settlement agreement will not be accepted as a true copy
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`of the settlement agreement. With respect to having the settlement agreement
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`treated as business confidential information and kept separate from the patent
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`file(s) under 37 C.F.R. § 42.74(c), the parties must file the confidential settlement
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`agreement electronically via the Patent Review Processing System (PRPS) in
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`accordance with the instructions provided on the Board’s website (uploading as
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`“Parties and Board Only”). The parties were also directed to FAQ G2 on the
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`Board’s website page at http://www.uspto.gov/ip/boards/bpai/prps.jsp for
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`instructions on how to file their settlement agreement as confidential.
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`Accordingly, it is
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`ORDERED that the parties are authorized to file a joint motion to terminate
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`this proceeding;
`
`FURTHER ORDERED that the joint motion must be accompanied by a true
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`copy, labeled as an exhibit, of the settlement agreement as required by 35 U.S.C.
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`§ 317(b) and 37 C.F.R. § 42.74(b);
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`FURTHER ORDERED that in the joint motion the parties may request that
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`the settlement agreement be treated as business confidential information and kept
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`separate from the underlying patent file as provided in 37 C.F.R. § 42.74(c); and
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`FURTHER ORDERED that any confidential settlement agreement must be
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`filed electronically via PRPS in accordance with the instructions provided on the
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`Board’s website (uploading as “Parties and Board Only”).
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`
`
`3
`
`
`
`IPR2013-00373
`Patent 6,778,074
`
`PETITIONER:
`
`Jennifer Bailey
`Jason Mudd
`Eric Buresh
`jcrawford@hoveywilliam.com
`Jason.mudd@eriseip.com
`eric.buresh@eriseip.com
`
`PATENT OWNER:
`
`John Kasha
`john.kasha@kashalaw.com
`
`
`
`
`
`
`4
`
`
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