`
`
`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 44
`Entered: November 7, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`AM GENERAL LLC,
`Petitioner,
`
`v.
`
`UUSI, LLC,
`Patent Owner.
`____________
`
`Cases1
`IPR2016-01050 (Patent 6,148,258)
`IPR2016-01051 (Patent 5,729,456)
`
`
`
`Before PHILLIP J. KAUFFMAN, MEREDITH C. PETRAVICK, and
`RICHARD E. RICE, Administrative Patent Judges.
`
`KAUFFMAN, Administrative Patent Judge.
`
`
`
`
`
`JUDGMENT
`Termination Due to Settlement after Institution of Inter Partes Review
`35 U.S.C. § 317 and 37 C.F.R. § 42.74
`
`
`
`
`1 We use this caption to indicate that this Decision applies to, and is entered
`in, each case. The parties are not authorized to use this type of caption.
`
`
`
`IPR2016-01050 (Patent 6,148,258)
`IPR2016-01051 (Patent 5,729,456)
`
`
`Introduction
`I.
`We instituted trial in IPR2016-01050 on November 14, 2016, and we
`instituted trial in IPR2016-01051 on November 22, 2016. IPR2016-01050,
`Paper 17; IPR2016-01051, Paper 13. On November 7, the parties filed in
`each proceeding a Joint Motion to Terminate Inter Partes Review under 35
`U.S.C. § 317(a).2 IPR2016-01050, Paper 43 (“Joint Motion to Terminate”);
`IPR2016-01051, Paper 40. Along with the Joint Motion to Terminate, the
`parties filed a true copy of their agreement to settle. IPR2016-01050, Paper
`43, Exhibit B; IPR2016-01051, Paper 40, Exhibit B.
`II. Discussion
`Under 35 U.S.C. § 317(a), an inter partes review proceeding shall be
`terminated with respect to any petitioner upon the joint request of the
`petitioner and the patent owner, unless the Patent and Trademark Office has
`decided the merits of the proceeding before the request for termination is
`filed. These proceedings are at a late stage of the trial. However, the Board
`has not yet entered final written decisions on the merits.
`Furthermore, under 35 U.S.C. § 317(a), “[i]f no petitioner remains in
`the inter partes review, the Office may terminate the review or proceed to a
`final written decision under section 318(a).” Generally, the Board expects
`that a proceeding will terminate after the filing of a settlement agreement.
`See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768
`(Aug. 14, 2012). Petitioner is the sole petitioner in this review. The Board
`has discretion to terminate this review with respect to Patent Owner.
`
`
`2 In a conference call held on November 6, 2017, we authorized the parties
`to file each Joint Motion to Terminate.
`
`2
`
`
`
`IPR2016-01050 (Patent 6,148,258)
`IPR2016-01051 (Patent 5,729,456)
`
`
`Under 35 U.S.C. § 317(b), any agreement or understanding between a
`patent owner and a petitioner, including any collateral agreements referred to
`in such agreement or understanding, made in connection with, or in
`contemplation of, the termination of the proceeding shall be in writing, and a
`true copy of such agreement or understanding shall be filed in the Office. In
`the Joint Motion to Terminate, the parties represent that they have settled
`their dispute and have reached an agreement that resolves the dispute in
`these proceedings and all other disputes between the parties relating to both
`of the patents at issue. IPR2016-01050, Paper 43, 2; IPR2016-01051, Paper
`40, 2. Further, Patent Owner indicates that there are no other proceedings at
`the Board or other courts involving the patents at issue. Id. In support of the
`Joint Motions to Terminate, the parties submitted a true copy of their written
`settlement agreement in each proceeding. IPR2016-01050, Paper 43, Ex. B;
`IPR2016-01051, Paper 40, Ex. B.
`Upon consideration of the circumstances of these proceedings, we
`grant the Joint Motions to Terminate and terminate these proceedings as to
`both Petitioner and Patent Owner without entering a final written decision in
`either inter partes review. 37 C.F.R. § 42.74.
`
`
`III. Orders
`It is ORDERED that the Joint Motions to Terminate are granted, and
`these inter partes reviews are hereby terminated.
`
`
`
`
`
`3
`
`
`
`IPR2016-01050 (Patent 6,148,258)
`IPR2016-01051 (Patent 5,729,456)
`
`PETITIONER:
`Nicole M. Jantzi
`Ian B. Brooks
`Paul M. Schoenhard
`McDermott Will & Emery LLP
`njantzi@mwe.com
`ibrooks@mwe.com
`pschoenhard@mwe.com
`
`PATENT OWNER:
`Jay Kesan
`Teresa Summers
`DiMuro Ginsberg PC
`jay@keyiplaw.com
`teresa@keyiplaw.com
`
`
`
`
`4
`
`
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