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`Entered: July 27, 2015
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`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`FORD MOTOR COMPANY,
`Petitioner,
`
`v.
`
`CUOZZO SPEED TECHNOLOGIES LLC,
`Patent Owner.
`
`____________
`
`Case IPR2014-01393
`Patent 6,778,074 B1
`____________
`
`
`
`Before JAMESON LEE and JOSIAH C. COCKS,
`Administrative Patent Judges.
`
`
`LEE, Administrative Patent Judge.
`
`ORDER
`Conduct of Proceedings
`37 C.F.R. 42.5
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`
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`IPR2014-01393
`Patent 6,778,074 B1
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`
`
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`On July 24, 2015, a telephone conference was held. The participants
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`were respective counsel for the parties and Judges Lee and Cocks. The
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`parties requested authorization to file a joint motion to terminate proceeding
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`on the basis of settlement.
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`
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`Generally, the Board expects that a proceeding will terminate after the
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`filing of a settlement agreement. See, e.g., Office Patent Trial Practice
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`Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Any agreement or
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`understanding between the parties made in connection with, or in
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`contemplation of, the termination of a proceeding, including collateral
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`agreements referred to in such agreement or understanding, shall be in
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`writing, and a true copy of the agreement shall be filed with the Board prior
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`to termination. 35 U.S.C. § 317(b); 37 C.F.R. § 42.74(b).
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`A redacted version of any agreement will not be accepted as a true
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`copy thereof. The parties may request, apart from the joint motion to
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`terminate, that their filed agreement or understanding be treated as business
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`confidential information and kept separate from the underlying patent file, as
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`provided in 35 U.S.C. § 317(b); 37 C.F.R. § 42.74(c).
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`
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`The joint motion must include an explanation as to why termination is
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`appropriate. Information should be provided on the status of related district
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`court actions in which Patent 6,778,074 has been asserted, with respect to all
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`defendants.
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`
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`With regard to having any filed agreement or understanding treated as
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`business confidential information and kept separate from the patent file(s)
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`under 37 C.F.R. § 42.74(c), the parties must file the agreement or
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`2
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`
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`IPR2014-01393
`Patent 6,778,074 B1
`
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`understanding electronically via the Patent Review Processing System
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`(PRPS) in accordance with the instructions provided on the Board’s website
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`(uploading as “Parties and Board Only”). Attention of the parties is also
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`directed to FAQ G2 on the Board’s website page at
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`http://www.uspto.gov/ip/boards/bpai/prps.jsp for instructions on how to file
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`a settlement agreement as confidential. The agreement should be filed as an
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`exhibit, and not an appendix to the joint motion to terminate proceeding.
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`
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`Accordingly, it is
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`ORDERED that the parties are authorized to file a joint motion to
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`terminate proceeding with respect to both Petitioner and Patent Owner, as
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`well as a separate request to file agreements or understanding in
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`contemplation of termination as business confidential information; and
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`
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`FURTHER ORDERED that the motion and the request are due
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`August 3, 2015.
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`3
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`4
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`IPR2014-01393
`Patent 6,778,074 B1
`
`
`For PETITIONERS:
`
`Eric A. Buresh
`Jason Mudd
`eric.buresh@eriseip.com
`jason.mudd@eriseip.com
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`
`
`For PATENT OWNER:
`
`John Kasha
`john.kasha@kashalaw.com
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