`571-272-7822
`
`
`Paper 8
`April 25, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PASON SYSTEMS USA CORP.,
`Petitioner,
`
`v.
`
`AUTO-DRILL, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00624
`Patent 6,994,172
`____________
`
`
`Before MEREDITH C. PETRAVICK, WILLIAM V. SAINDON, and
`SCOTT A. DANIELS, Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge.
`
`DECISION
`Termination of the Proceeding Prior to Institution Due to Settlement
`37 C.F.R. § 42.74
`
`
`
`
`
`Case IPR2016-00624
`Patent 6,994,172
`
`
`DISCUSSION
`I.
`On April 20, 2016, the parties filed a Joint Motion to Terminate
`Proceeding (Paper 7) and a Joint Request to file the License and Dismissal
`Agreement as Business Confidential Information (Paper 6). The parties also
`filed a true copy of their written settlement agreement under 37 C.F.R.
`§ 42.74(b). Ex. 1018. For the reasons discussed below, the Joint Motion to
`Terminate Proceeding and the Joint Request to file the License and
`Dismissal Agreement as Business Confidential Information are granted.
`This proceeding is in the preliminary stages. Patent Owner has not
`yet filed a preliminary response and no inter partes review has been
`instituted. The parties represent that Petitioner will no longer be
`participating in this proceeding and that their settlement includes dismissing
`the co-pending district court case involving the challenged patent. Paper 7,
`3. The parties represent that there are no other related district court cases
`involving the Petitioner and that there are no other pending inter partes
`reviews involving the challenged patent. Id. at 3–4. In view of the
`circumstances presented in this case, we determine that termination of the
`proceeding is appropriate.
`
`II. ORDER
`
`Accordingly, it is:
`ORDERED that the Joint Request to file the License and Dismissal
`Agreement as Business Confidential Information (Paper 6) is granted;
`FURTHER ORDERED that Exhibit 1018 be treated as business
`confidential information under 37 C.F.R. § 42.74(c);
`FURTHER ORDERED that the Joint Motion to Terminate Proceeding
`(Paper 7) is granted; and
`
`
`
`1
`
`
`
`Case IPR2016-00624
`Patent 6,994,172
`
`
`FURTHER ORDERED that this proceeding is hereby terminated.
`
`2
`
`
`
`For PETITIONER:
`
`Gordon T. Arnold
`garnold@arnold-iplaw.com
`
`Christopher P. McKeon
`cmckeon@arnold-iplaw.com
`
`For PATENT OWNER:
`David G. Henry, Sr.
`dhenry@grayreed.com
`
`Michael D. Ellis
`mellis@grayreed.com
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