UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`GARMIN INTERNATIONAL, INC. ET AL.
`
`Petitioner
`
`v.
`
`CUOZZO SPEED TECHNOLOGIES LLC
`
`Patent Owner
`
`____________
`
`IPR2013-00373
`
`Patent 6,778,074
`
`____________
`
`
`
`
`
`
`
`
`JOINT MOTION TO TERMINATE PROCEEDING AS TO PETITIONER
`PURSUANT TO 35 U.S.C. § 317
`
`1
`
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`GARMIN INTERNATIONAL, INC. ET AL.
`
`Petitioner
`
`v.
`
`CUOZZO SPEED TECHNOLOGIES LLC
`
`Patent Owner
`
`____________
`
`IPR2013-00373
`
`Patent 6,778,074
`
`____________
`
`
`
`
`
`
`
`
`JOINT MOTION TO TERMINATE PROCEEDING AS TO PETITIONER
`PURSUANT TO 35 U.S.C. § 317
`
`1
`
`
`
`
`
`
`Pursuant to 35 U.S.C. § 317(a) Petitioner Garmin International, Inc. et al.
`
`(“Petitioner”) and Patent Owner Cuozzo Speed Technologies (“Patent Owner”)
`
`jointly request termination of IPR2013-00373, which is directed to Patent
`
`6,778,074 (the “‘074 Patent”), as to Petitioner.
`
`On December 18, 2013, the United States Patent and Trademark Office
`
`(“USPTO”) issued a Decision to Institute Inter Partes Review of certain claims of
`
`the ‘074 Patent. IPR2013-000373, Paper 12. No final written decision on the
`
`merits of this review proceeding has been entered. The parties have settled their
`
`dispute, and have reached agreement to terminate this inter partes review.
`
`The parties’ Settlement Agreement has been made in writing, and a true
`
`copy of same is attached hereto as Exhibit 1116.1 The parties desire that the
`
`Settlement Agreement be maintained as business confidential information under
`
`37 C.F.R. §42.74(c) and a separate joint request to that effect is being filed on
`
`even date herewith.
`
`1. Reasons Why Termination is Appropriate.
`
`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
`
`
`1 The Settlement Agreement is being filed electronically via the Patent Review
`
`Processing System (PRPS) as “Parties and Board Only.”
`
`
`
`
`
`
`
`
`
`
`
`
`the petitioner and the patent owner, unless the Office has decided the merits of the
`
`proceeding before the request for termination is filed.” Because 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. Within the context of
`
`Section 317(a) a decision on the merits must be something beyond a decision
`
`instituting trial. Otherwise the quoted phrase would be rendered meaningless
`
`because every “inter partes review instituted under this chapter” originates with a
`
`decision instituting trial. Here, no decision on the merits has been made.
`
`Accordingly, the USPTO is required to terminate this inter partes review with
`
`respect to Petitioner based on this joint request.
`
`Petitioner takes no position on whether this review proceeding should be
`
`terminated with respect to Patent Owner.
`
`Because § 317(a) indicates that the USPTO is not required to terminate an
`
`inter partes review when no petitioner remains in the proceeding, Patent Owner is
`
`providing comments as to why termination with respect to Patent Owner is proper
`
`in Patent Owner’s Explanation as to Why Termination Is Appropriate, attached
`
`hereto as Appendix 1.
`
`2. Related District Court Litigations and Status.
`
`The ‘074 Patent is the subject of the following pending litigations:
`
`
`
`
`
`
`
`
`
`
`Case Name
`Cuozzo Speed
`Technologies
`LLC v.
`Garmin
`International,
`Inc.; Garmin
`USA, Inc.;
`Chrysler
`Group LLC
`Cuozzo Speed
`Technologies
`LLC v.
`General
`Motors
`Company
`Cuozzo Speed
`Technologies
`LLC v. JVC
`Americas
`Corporation
`Cuozzo Speed
`Technologies
`LLC v.
`TomTom, Inc.
`and Mazda
`Motors of
`America, Inc.
`
`
`Docket No.
`Civil Action
`No. 2:12-cv-
`03623-CCC-
`JAD
`
`Court
`U.S.D.C.
`for the
`District
`of New
`Jersey
`
`Defendants
`Chrysler Group LLC;
`Garmin International, Inc.
`(will be dismissed);
`Garmin USA, Inc. (will
`be dismissed)
`
`Status
`Pending
`
`Civil Action
`No. 2:12-cv-
`03624-CCC-
`JAD
`
`Civil Action
`No. 2:12-cv-
`03625-CCC-
`JAD
`
`Civil Action
`No. 2:12-cv-
`03626-CCC-
`JAD
`
`U.S.D.C.
`for the
`District
`of New
`Jersey
`
`U.S.D.C.
`for the
`District
`of New
`Jersey
`U.S.D.C.
`for the
`District
`of New
`Jersey
`
`General Motors Company Pending
`
`JVC Americas
`Corporation
`
`Closed
`
`TomTom, Inc. and Mazda
`Motors of America, Inc.
`
`Pending
`
`3. Future Participation by the Parties.
`
`Pursuant to the Settlement Agreement, Petitioner will not further participate
`
`in these proceedings, even if they are not terminated pursuant to this joint motion.
`
`Patent Owner reserves its right to participate, if necessary. Patent Owner notes,
`
`
`
`
`
`
`
`
`
`
`
`
`however, that in the absence of Petitioner, it is unclear how these proceedings
`
`could properly proceed.
`
`
`
`
`
`
`
`January 23, 2014
`Date
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`/John R. Kasha/
`Registration No. 53,100
`Attorneys for Patent Owner
`
`John R. Kasha, Lead Counsel
`Kelly L. Kasha, Reg. No. 47,743
`Kasha Law LLC
`14532 Dufief Mill Rd.
`North Potomac, MD 20878
`(703) 867-1886, telephone
`(301) 340-3022, facsimile
`Email: john.kasha@kashalaw.com
`Email: kelly.kasha@kashalaw.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`January 23, 2014
`Date
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`/Jennifer C. Bailey/
`Registration No. 52,583
`Attorneys for Petitioner
`
`Jennifer C. Bailey, Lead Counsel
`HOVEY WILLIAMS LLP
`10801 Mastin Boulevard, Suite 1000
`Overland Park, Kansas 66210
`(913) 647-9050, telephone
`(913) 647-9057, facsimile
`Email: jcb@hoveywilliams.com
`
`Jason R. Mudd, Reg. No. 57,700
`Eric Buresh, Reg. No. 53,394
`ERISE IP, P.A.
`6201 College Blvd., Suite 300
`Overland Park, Kansas 66211
`(913) 777-5600, telephone
`(913) 777-5601, facsimile
`Email: Jason.Mudd@EriseIP.com
`Email: Eric.Buresh@EriseIP.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`EXHIBIT 1116
`
`
`(Settlement Agreement filed electronically via the Patent Review Processing
`
`System (PRPS) as “Parties and Board Only”)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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`
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`
`
`APPENDIX 1
`
`APPENDIX 1
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`GARMIN INTERNATIONAL, INC. ET AL.
`
`Petitioner
`
`v.
`
`CUOZZO SPEED TECHNOLOGIES LLC
`
`Patent Owner
`
`____________
`
`IPR2013-00373
`
`Patent 6,778,074
`
`____________
`
`PATENT OWNER’S EXPLANATION
`
`AS TO WHY TERMINATION IS APPROPRIATE
`
`
`
`
`
`
`
`
`
`Patent Owner Cuozzo Speed Technologies LLC (“Patent Owner”)
`
`respectfully submits that this proceeding should be terminated with respect to the
`
`Patent Owner, because (1) Patent Owner and the only Petitioners involved in the
`
`proceedings have filed a joint request to terminate this proceedings at to
`
`Petitioners; (2) the proceeding is in its early stage, (3) the merits of the petition
`
`have not been determined, and (4) concluding these proceedings at this early
`
`juncture promotes the Congressional goal to establish a more efficient and
`
`streamlined patent system that, inter alia, limits unnecessary and
`
`counterproductive litigation costs. See “Changes to Implement Inter Partes Review
`
`Proceedings, Post-Grant Review Proceedings, and Transitional Program for
`
`Covered Business Method Patents,” Final Rule, 77 Fed. Reg., no. 157, p. 48680
`
`(Tuesday, August 14, 2012). By permitting termination of review proceedings as
`
`to all parties, upon settlement of their disputes, the United States Patent and
`
`Trademark Office (“USPTO”) provides a measure of certainty as to the outcome
`
`of such proceedings. This certainty helps foster an environment that promotes
`
`settlements, creating a timely, cost-effective alternative to litigation. In contrast,
`
`maintaining these proceedings in the absence of Petitioner would effectively pit
`
`the Patent Owner against the USPTO, a scenario never intended by the legislators
`
`that enacted the laws governing these proceedings.
`
`
`
`
`
`
`
`
`
`
`
`
`Consider that, under 35 U.S.C. § 317(a) termination as to the Petitioner is
`
`mandatory upon joint request of the parties (which has been filed), and once that
`
`termination is effected, there will be no counter-party in these proceedings. In
`
`enacting the applicable law Congress did not intend in such circumstances that the
`
`USPTO would step into the shoes of the Petitioner or assume an ex parte
`
`examination role. Instead, The Leahy-Smith America Invents Act replaced inter
`
`partes reexamination with review proceedings and entrusted such matters to the
`
`Patent Trial and Appeal Board (“PTAB”) rather than the examining corps.
`
`Commenting on these marked changes to USPTO practice, Senator Kyl noted that
`
`the new procedures were intended to be strictly adjudicative in nature, where “the
`
`petitioner, rather than the Office, bears the burden of showing unpatentability.”
`
`157 Congressional Record S1375, daily ed. March 8, 2011. As these changes were
`
`borrowed from the Senator’s prior bill from the 110th Congress, S. 3600, he cited
`
`with approval his comments in support of that prior legislation:
`
`“The bill uses an oppositional model, which is favored by
`
`PTO as allowing speedier adjudication of claims. Under a
`
`reexam system, the burden is always on PTO to show that a
`
`claim is not patentable. Every time that new information is
`
`presented, PTO must reassess whether its burden has been
`
`met. This model has proven unworkable in inter partes
`
`
`
`
`
`
`
`
`
`
`
`
`reexam, in which multiple parties can present information to
`
`PTO at various stages of the proceeding, and which system
`
`has experienced interminable delays. Under an oppositional
`
`system, by contrast, the burden is always on the petitioner to
`
`show that a claim is not patentable. Both parties present their
`
`evidence to the PTO, which then simply decides whether the
`
`petitioner has met his burden. 154 Congressional Record
`
`S9987, daily ed. Sept. 27, 2008 (emphasis added).
`
`Senator Kyl’s comments1 make clear that the new review proceedings were
`
`not intended to devolve into the prior “unworkable” system of reexamination in
`
`the event no petitioner was left. The PTAB’s role was intended to be that of an
`
`adjudicator resolving a dispute between litigants, not an examiner. See, e.g.,
`
`
`1 Senator Kyl also explained that although section 316(a)(4) of the then-pending
`
`Patent Reform Act of 2011, S.23, gave the USPTO discretion in prescribing
`
`regulations governing the new proceeding, the USPTO had assured Congress that
`
`it would “use this discretion to convert inter partes into an adjudicative
`
`proceeding.” This change also was effectively compelled by section 316(e) of the
`
`Act, which assigned to a petitioner the burden of proving a proposition of
`
`unpatentability. 157 Congressional Record S1375, daily ed. March 8, 2011.
`
`
`
`
`
`
`
`
`
`
`
`
`Statement of Sen. Kyl, 157 Congressional Record S1376, daily ed. March 8, 2011
`
`(“Currently, inter partes reexaminations usually last for 3 to 5 years. Because of
`
`procedural reforms made by the present bill to inter partes proceedings, the Patent
`
`Office is confident that it will be able to complete these proceedings within one
`
`year. Among the reforms that are expected to expedite these proceedings are the
`
`shift from an examinational to an adjudicative model, and the elevated
`
`threshold for instituting proceedings.”) (emphasis added). In the face of a
`
`negotiated settlement between the parties and the absence of any petitioner in the
`
`proceedings, the Board’s role has been fully discharged and termination of the
`
`proceedings is justified.
`
`When the Rules of Practice for trials before the PTAB were adopted, the
`
`USPTO noted that Section 42.74(a) affords the Board the opportunity to determine
`
`patentability, notwithstanding any settlement between the parties. This rule was
`
`said to be consistent with 35 U.S.C. 135(e), which provides that the Board is not
`
`required to follow a settlement agreement in a derivation proceeding when it is
`
`inconsistent with the evidence. 77 Fed. Reg. no. 157, p. 48625 (Tuesday, August
`
`14, 2012). In the present case, the parties’ Settlement Agreement is not
`
`inconsistent with any evidence.
`
`Moreover, because these proceedings are at such an early stage it is an open
`
`question as to how they could continue in the absence of any petitioner. For
`
`
`
`
`
`
`
`
`
`example, any future motions by Patent Owner would be unopposed. As Congress
`
`intended that the Board act solely as an adjudicator, it is unclear how the Board
`
`would, or even could, act on such matters. Proceeding to a final written decision
`
`under 35 U.S.C. § 317(a) in such circumstances would, therefore, seem to present
`
`many obstacles.
`
`Should the Board decide to continue the present proceedings, the
`
`Congressional goal of speedy dispute resolutions will be chilled. Faced with the
`
`prospect of having to continue to defend a patent, not against a third party
`
`petitioner but against the PTAB, patent owners would have little, if any, reason to
`
`enter into compromises of the kind reached between the present parties. In such
`
`circumstances, patent owners would still face the jeopardies and costs associated
`
`with review proceedings but would be effectively prohibited from availing
`
`themselves of the benefits (for example the cross-examination of witnesses upon
`
`notice) of same.
`
`For at least the foregoing reasons, termination of these proceedings as to the
`
`Patent Owner is respectfully requested.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`January 23, 2014
`Date
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`/John R. Kasha/
`Registration No. 53,100
`Attorneys for Patent Owner
`
`John R. Kasha, Lead Counsel
`Kelly L. Kasha, Reg. No. 47,743
`Kasha Law LLC
`14532 Dufief Mill Rd.
`North Potomac, MD 20878
`(703) 867-1886, telephone
`(301) 340-3022, facsimile
`Email: john.kasha@kashalaw.com
`Email: kelly.kasha@kashalaw.com
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing JOINT MOTION
`TO TERMINATE PROCEEDING PURSUANT TO 35 U.S.C. § 317 and its
`exhibits and appendices was served on January 23, 2014, by filing this document
`though the Patent Review Processing System as well as delivering a copy via
`electronic mail directed to the attorneys of record for the Petitioner at the
`following address:
`
`Jennifer C. Bailey, Lead Counsel
`Hovey Williams LLP
`10801 Mastin Blvd., Suite 1000
`Overland Park, Kansas 66210
`Service E-mail: jcb@hoveywilliams.com
`
`Jason R. Mudd, Back-Up Counsel
`ERISE IP, P.A.
`6201 College Blvd., Suite 300
`Overland Park, Kansas 66211
`Service E-mail: Jason.Mudd@EriseIP.com
`
`Eric A. Buresh, Back-Up Counsel
`ERISE IP, P.A.
`6201 College Blvd., Suite 300
`Overland Park, Kansas 66211
`Service E-mail: Eric.Buresh@EriseIP.com.
`
`The parties have agreed to electronic service in this matter.
`
`
`
`
`January 23, 2014
`Date
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`/John R. Kasha/
`
`Registration No. 53,100
`Attorneys for Patent Owner
`
`John R. Kasha, Lead Counsel
`Kelly L. Kasha, Reg. No. 47,743
`Kasha Law LLC
`14532 Dufief Mill Rd.
`
`
`
`
`
`
`
`
`
`North Potomac, MD 20878
`(703) 867-1886, telephone
`(301) 340-3022, facsimile
`Email: john.kasha@kashalaw.com
`Email: kelly.kasha@kashalaw.com
`
`
`
`
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