`571.272.7822
`
`
`
`
`
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`Paper No. 7
`
` Entered: May 24, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VALENS SEMICONDUCTOR LTD.,
`Petitioner,
`
`v.
`
`VESPER TECHNOLOGY RESEARCH, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00865
`Patent 6,611,247 B1
`____________
`
`
`
`Before KEVIN F. TURNER, JASON J. CHUNG, and
`MELISSA A. HAAPALA, Administrative Patent Judges.
`
`HAAPALA, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Joint Motion to Terminate
`35 U.S.C. § 317 and 37 C.F.R. §§ 42.72, 42.74
`
`Pursuant to our authorization, on May 10, 2017, the parties filed a
`joint Motion to Terminate Proceedings and Request to File
`Settlement Agreement as Business Confidential Information. Paper 6.
`Along with the motion, the parties filed a copy of a document they represent
`
`
`
`
`
`IPR2017-00865
`Patent 6,611,247 B1
`
`
`
`
`
`
`
`is a true copy of the settlement agreement between the parties as Exhibit
`2001. Id. at 2. The parties represent that there are no collateral agreements
`made in connection with the termination of this inter partes review. Id. The
`parties request the settlement agreement (Ex. 2001) be treated as business
`confidential information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(c). Id. at 3.
`
`The parties may agree to settle any issue in a proceeding pursuant to
`a written agreement, a true copy of which shall be filed with the Board
`before termination of the trial. 37 C.F.R. § 42.74(a)–(b). Any agreement or
`understanding between the 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 an inter partes
`review shall be in writing and a true copy of such agreement or
`understanding shall be filed in the Office before the termination of such
`review as between the parties. 35 U.S.C. § 317(b). Although the parties
`represent that they filed a “true copy” of the settlement agreement with the
`joint Motion to Terminate, the parties failed to include the associated
`exhibits (Exhibits A-E) referenced in the agreement. See Ex. 2001. Thus,
`the settlement agreement submitted by the parties is not a “true copy” of the
`entire agreement.
`
`Because the parties did not comply with 35 U.S.C. § 317(b) and
`37 C.F.R. § 42.74(c), the joint Motion to Terminate this proceeding is
`denied. The settlement agreement (Ex. 2001) will be expunged.
`Accordingly, the request to treat the settlement agreement (Ex. 2001) as
`business confidential information is denied as moot.
`
`However, under the circumstances identified by the parties, it may be
`appropriate to terminate the proceeding. Therefore, we authorize the parties
`
`2
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`
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`IPR2017-00865
`Patent 6,611,247 B1
`
`
`
`
`
`
`
`to file a revised joint motion to terminate this proceeding. As required by
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), the motion must be
`accompanied by a true copy of the settlement agreement, including any
`associated exhibits, and must include a statement certifying that there are no
`other collateral agreements or understandings made in connection with, or in
`contemplation of, the termination of the inter partes review. The parties
`may request that the settlement agreement be treated as business confidential
`information and kept separate from the underlying patent file. See
`35 U.S.C. § 317(b); 37 C.F.R. § 42.74(c). The request must be filed with the
`settlement. Id.
`
`It is
`
`ORDERED that the joint Motion to Terminate the captioned
`proceeding is denied without prejudice;
`
`FURTHER ORDERED that Ex. 2001 is expunged;
`
`FURTHER ORDERED that the joint request that the settlement
`agreement (Ex. 2001) be treated as business confidential information is
`denied as moot;
`
`FURTHER ORDERED that the parties are authorized to file a
`revised joint motion to terminate this proceeding, which may include a
`request that the settlement agreement be treated as business confidential
`information; and
`
`FURTHER ORDERED that the corrected joint motion must be
`accompanied by a true copy of the parties’ settlement agreement, including
`any associated exhibits, as required by 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(b).
`
`
`
`
`3
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`
`
`IPR2017-00865
`Patent 6,611,247 B1
`
`For PETITIONER:
`Barry Schindler
`Lennie Bersh
`Vimal Kapadia
`GREENBERG TRAURIG LLP
`schindlerb@gtlaw.com
`bershl@gtlaw.com
`kapadiav@gtlaw.com
`
`
`
`For PATENT OWNER:
`Kenneth Weatherwax
`LOWENSTEIN & WEATHERWAX LLP
`weatherwax@lowensteinweatherwax.com
`
`4
`
`
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