Paper No. 21
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
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`DAIFUKU CO., LTD. AND DAIFUKU AMERICA CORP.,
`Petitioner,
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`v.
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`MURATA MACHINERY, LTD.,
`Patent Owner
`__________
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`Case IPR2015-01538
`Patent 6,113,341
`__________
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`
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`JOINT MOTION TO TERMINATE AND REQUEST TO TREAT
`SETTLEMENT AGREEMENT AS BUSINESS CONFIDENTIAL
`INFORMATION
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
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`DAIFUKU CO., LTD. AND DAIFUKU AMERICA CORP.,
`Petitioner,
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`v.
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`MURATA MACHINERY, LTD.,
`Patent Owner
`__________
`
`Case IPR2015-01538
`Patent 6,113,341
`__________
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`
`
`JOINT MOTION TO TERMINATE AND REQUEST TO TREAT
`SETTLEMENT AGREEMENT AS BUSINESS CONFIDENTIAL
`INFORMATION
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`EXHIBIT LIST
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`Exhibit Name
`U.S. Patent No. 6,113,341 (the “’341 patent”).
`Amended Complaint Filed February 19, 2015; Murata
`Machinery USA, Inc. et al. v. Daifuku Co., Ltd. et al.,
`No. 2:13-cv-00866 (D. Utah 2013).
`Japanese Patent Document 5-82913 (the “’913 publication”).
`U.S. Patent No. 3,863,777 (the “’777 patent”).
`Japanese Patent Document SHO 63[1988]-242809
`(the “’809 publication”).
`Declaration of Dr. Robert H. Sturges Regarding
`U.S. Patent No. 6,113,341.
`Prosecution History for U.S. Patent No. 6,113,341.
`(Corrected) Declaration of Michael J. Farley.
`PRPS Notification dated April 29, 2016, 11:49 PM.
`PRPS Notification dated April 29, 2016, 11:58 PM.
`Emails to and from counsel concluding May 2, 2016.
`Confidential Settlement Agreement.
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`Exhibit No.
`1001
`1002
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`1003
`1004
`1005
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`1006
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`1007
`1008
`1009
`1010
`1011
`1012
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`I.
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`Relief Requested
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`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74, Daifuku Co., Ltd. and
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`Daifuku America Corp. (collectively, “Petitioner”) and Murata Machinery, Ltd.
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`(“Patent Owner”) jointly move to terminate the Inter Partes Review of U.S. Patent
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`6,113,341 (the “’341 patent”), Case IPR2015-01538 (the “present IPR
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`proceeding”). The Board authorized this Motion in an email message on
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`September 21, 2016.
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`Petitioner and Patent Owner (the “Parties”) have settled all of their disputes
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`involving the ’341 patent and have reached a confidential Settlement Agreement.
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`Exhibit 1012 is a true and correct copy of the Settlement Agreement, which
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`consists of: (1) a Patent Cross License Agreement, (2) a Memorandum
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`Accompanying Patent Cross License Agreement Executed on September 8, 2016,
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`and (3) a Letter dated September 27, 2016.
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`II. Reasons Why Termination is Appropriate
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`Termination is appropriate because the Parties are jointly requesting
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`termination and because the Board has not yet “decided the merits of the
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`proceeding.” 35 U.S.C. § 317(a). The Board has not held an Oral Hearing or
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`issued a final written decision.
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`Termination is also appropriate because the Parties have settled all of their
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`disputes involving the ’341 patent. See Office Patent Trial Practice Guide, 77 Fed.
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`Reg. 48768 (Aug. 14, 2012) (“There are strong public policy reasons to favor
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`settlement between the parties to a proceeding. . . . The Board expects that a
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`proceeding will terminate after the filing of a settlement agreement, unless the
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`Board has already decided the merits of the proceeding.”). The Parties have agreed
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`to terminate the present IPR proceeding, and all parties to the related district court
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`action (Murata Machinery USA, Inc. et al. v. Daifuku Co., Ltd. et al., Case 2:13-
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`cv-00866 (D. Utah)) have agreed to stipulate to dismissal of the related court
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`action.
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`Further, termination is appropriate because Petitioner will not continue to
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`participate in the present IPR proceeding even if it is not terminated. See id. (“If
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`no petitioner remains in the inter partes review, the Office may terminate the
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`review or proceed to a final written decision under section 318(a).”).
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`III. Status of Related Proceedings
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`On February 19, 2015, in the related court action, Murata Machinery, Ltd.
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`and Murata Machinery USA, Inc. filed an amended complaint (Ex. 1002) against
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`Petitioner, alleging infringement of the ’341 patent. Pursuant to the Settlement
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`Agreement, all of the parties to that litigation are filing a joint stipulation of
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`dismissal.
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`There is no IPR proceeding that is related to the present IPR proceeding.
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`IV. The Parties Will Not Continue to Participate in This Proceeding
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`As mentioned above, Petitioner will not continue to participate in the present
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`IPR proceeding even if this Joint Motion is not granted. Similarly, Patent Owner
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`will not continue to participate in the present IPR proceeding.
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`V. Request to Treat Settlement Agreement as Business
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`Confidential Information
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`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), Petitioner and
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`Patent Owner jointly request that the Settlement Agreement be treated as business
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`confidential information and be kept separate from the file of the ’341 patent. In
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`view of this request, the Settlement Agreement has been filed for access by the
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`“Parties and Board Only.”
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`VI. Conclusion
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`For the foregoing reasons, Petitioner and Patent Owner respectfully request
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`the Board terminate the present IPR proceeding and treat the Settlement
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`Agreement as business confidential information and keep the documents separate
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`from the file of the ’341 patent.
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`Respectfully submitted,
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`
`
`/Mark J. THRONSON, #33,082/
`____________________________
`Mark J. Thronson
`Registration No. 33,082
`BLANK ROME LLP
`1825 Eye Street NW
`Washington DC 20006
`Tel.: 202-420-4742
`MThronson@BlankRome.com
`
`Counsel for Petitioner
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`Respectfully submitted,
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`
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`/Mark T. Garrett/
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`____________________________
`Mark T. Garrett, Lead Counsel
`Reg. No. 44,699
`Tel: 512.536.3031; Fax: 512.536.4598
`mark.garrett@nortonrosefulbright.com
`NORTON ROSE FULBRIGHT US LLP
`98 San Jacinto Boulevard, Suite 1100
`Austin, TX 78701
`Counsel for Patent Owner,
`Murata Machinery, Ltd.
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`Dated: September 28, 2016
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that a copy of the foregoing JOINT MOTION
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`TO TERMINATE AND REQUEST TO TREAT SETTLEMENT
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`AGREEMENT AS BUSINESS CONFIDENTIAL INFORMATION is being
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`served on counsel of record by filing this document through the Patent Review
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`Processing System.
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`Dated: September 28, 2016
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`Respectfully submitted,
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`/Mark J. THRONSON, #33,082/
`_____________________________
`Mark J. Thronson
`Registration No. 33,082
`BLACK ROME LLP
`1825 Eye Street NW
`Washington DC 20006
`Tel.: 202-420-4742
`MThronson@BlankRome.com
`
`Counsel for Petitioner
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