`571-272-7822
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`Paper 19
`Entered: February 12, 2014
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`
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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.
`
`
`Case IPR2013-00373
`Patent 6,778,074
`
`
`Before JAMESON LEE, MICHAEL P. TIERNEY, and
`JOSIAH C. COCKS, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`JUDGMENT
`Termination of Proceeding
`37 C.F.R. § 42.73
`
`On January 23, 2014, the parties filed a joint motion to terminate this inter
`
`
`
`partes review with respect to the petitioner (Garmin International, Inc. and Garmin
`
`USA Inc., collectively “Garmin”). Paper 16. With the joint motion, the parties
`
`
`
`Case IPR2013-00373
`Patent 6,778,074
`
`filed a copy of their written settlement agreement covering Patent 6,778,074
`
`involved in this inter partes review. Ex. 1116. The parties also filed, on January
`
`23, 2014, a joint request to have their settlement agreement treated as confidential
`
`business information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`
`Paper 17.
`
`
`
`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
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`proceeding before the request for termination is filed.” The requirement for
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`terminating review with respect to Garmin, as petitioner, is met. The Board
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`instituted trial on December 18, 2013 (Paper 12), and has not yet, in this
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`proceeding, rendered a decision on the merits with respect to the patentability of
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`any involved claim. Also under 35 U.S.C. § 317(a), “If no petitioner remains in
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`the inter partes review, the Office may terminate the review or proceed to a final
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`written decision under section 318(a).” Garmin is the sole petitioner. The Board
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`has discretion to terminate this review with respect to the patent owner (“Cuozzo”).
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`
`
`Garmin takes no position on whether this review should be terminated with
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`respect to Cuozzo. However, Garmin represents that it will no longer participate
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`even if the Board does not terminate this review. That means it will file no reply to
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`Cuozzo’s patent owner response or an opposition to Cuozzo’s motion to amend
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`claims, if any. It also will not be conducting any cross examination of Cuozzo’s
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`witnesses, if the patent owner response relies on declaration testimony.
`
`
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`The joint motion indicates that in co-pending district court litigations
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`involving Patent 6,778,074, Cuozzo will seek to have Garmin International, Inc.
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`
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`-2-
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`
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`Case IPR2013-00373
`Patent 6,778,074
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`and Garmin USA, Inc. dismissed as defendants. The joint motion also indicates
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`that other defendants will remain in these related litigations. On this record, the
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`other defendants have not filed a petition for inter partes review of Patent
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`6,778,074, and there is no pending motion by any third party for joinder of another
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`inter partes review with this review.
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`
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`Cuozzo, by way of statements in Appendix I submitted with the joint
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`motion, seeks termination of this proceeding also as to Cuozzo. According to
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`Cuozzo, continuing this trial without the participation of Garmin, at this early stage
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`where Cuozzo has not yet submitted its patent owner response, is contrary to the
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`“adjudicative model” Congress envisioned for post-grant proceedings under the
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`America Invents Act. Also, Cuozzo also asserts that continuing the proceeding
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`with respect to Cuozzo undermines the Congressional goal of speedy dispute
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`resolution, because a patent owner would have little reason, if any, to enter into a
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`settlement with a petitioner.
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`
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`The Board determines that in the particular circumstances of this case it is
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`appropriate to terminate review both as to petitioner Garmin and patent owner
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`Cuozzo without rendering a final written decision See 35 U.S.C. § 317(a);
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`37 C.F.R. § 42.72.
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`
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`
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`It is
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`ORDERED that the joint motion to terminate this proceeding with respect to
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`Garmin GRANTED;
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`
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`FURTHER ORDERED that the Board exercises its discretion to terminate
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`this proceeding also with respect to Cuozzo;
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`
`
`
`-3-
`
`
`
`Case IPR2013-00373
`Patent 6,778,074
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`
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`FURTHER ORDERED that this inter partes review is hereby terminated as
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`to all parties including both petitioner Garmin International Inc. and Garmin USA
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`Inc., and patent owner Cuozzo Speed Technologies LLC; and
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`
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`FURTHER ORDERED that the parties’s joint request to have their
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`settlement agreement (Exhibit 1116) treated as business confidential information
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`under the 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is GRANTED.
`
`
`
`
`
`
`
`
`
`For PETITIONER
`
`Jennifer Bailey
`Jason Mudd
`jcb@hoveywilliams.com
`jason.mudd@eriseip.com
`
`
`
`For PATENT OWNER
`
`John R. Kasha
`Kelly L. Kasha
`john.kasha@kashalaw.com
`Kelly.kasha@kashalaw.com
`
`
`
`
`
`-4-
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`
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