`Tel: 571-272-7822
`
`
`Paper 23
`Entered: March 23, 2021
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`
`
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.,
`Petitioner,
`
`v.
`
`MICHIGAN MOTOR TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`IPR2020-00455
`Patent 7,116,081 B2
`____________
`
`
`
`Before NEIL T. POWELL, BARBARA A. PARVIS, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`
`
`
`TERMINATION
`Due to Settlement After Institution of Trial
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`
`
`
`
`
`
`
`IPR2020-00455
`Patent 7,116,081 B2
`
`
`On March 19, 2021, with Board authorization, Petitioner and Patent
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`Owner filed a joint motion to dismiss the petition and terminate the above-
`
`captioned proceeding. Paper 21. Along with the motion, the parties filed a
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`copy of a Confidential Agreement (Ex. 1100), as well as a joint request to
`
`treat the Confidential Agreement as business confidential information
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`(Paper 22). See 37 C.F.R. § 42.74(c) (a party to a settlement may request
`
`that the settlement agreement be treated as business confidential and be kept
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`separate from the patent file).
`
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
`
`this chapter shall be terminated with respect to any petitioner upon the joint
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`request of the petitioner and the patent owner, unless the Office has decided
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`the merits of the proceeding before the request for termination is filed.” It is
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`also provided in 35 U.S.C. § 317(a) that if no petitioner remains, the Office
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`may terminate the inter partes review.
`
`In this case, the Board issued a decision to institute inter partes
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`review. Paper 10. However, the Board has not yet decided the merits of the
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`proceeding or entered a final written decision. In the joint motion, the
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`parties state that they have settled their dispute and they jointly request
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`termination of this inter partes review. Paper 21, 1. Accordingly, in the
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`circumstances present here, we determine that it is appropriate to terminate
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`the proceeding. 37 C.F.R. § 42.71(a). This Order does not constitute a final
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`written decision pursuant to 35 U.S.C. § 318(a).
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`The parties also ask that the Confidential Agreement be treated as
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`business confidential information and be kept separate from the file of the
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`challenged patents. Paper 22. We determine that it is appropriate to treat
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`the Confidential Agreement as business confidential information, and to
`
`2
`
`
`
`IPR2020-00455
`Patent 7,116,081 B2
`
`keep that document separate from the files of the challenged patents,
`
`pursuant to 37 C.F.R. § 42.74(c).
`
`The parties further ask the Board to order that, “in the event a person
`
`or entity makes a written request, as stated in 37 C.F.R. § 42.74(c)(1)-(2), for
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`access to the [Confidential Agreement], that any such written request be
`
`served upon the parties on the day the written request is provided to the
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`Board.” Paper 22, 1. The statutory and regulatory provisions governing
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`access to such settlement agreements stand on their own, and therefore, we
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`deny the parties’ request here.
`
`For the foregoing reasons, it is:
`
`ORDERED that the joint motion is granted and this proceeding is
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`terminated with respect to Petitioner and Patent Owner;
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`FURTHER ORDERED that the joint request that the Confidential
`
`Agreement (Ex. 1100) be treated as business confidential information, to be
`
`kept separate from the patent file, is granted in this proceeding; and
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`FURTHER ORDERED that the joint request that the Board order that,
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`in the event a person or entity makes a written request for access to the
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`Confidential Agreement, that any such written request be served upon the
`
`parties on the day the written request is provided to the Board, is denied in
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`this proceeding.
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`
`
`
`
`3
`
`
`
`IPR2020-00455
`Patent 7,116,081 B2
`
`PETITIONER:
`
`Michael Specht
`Jason Fitzsimmons
`Kyle Conklin
`Daniel Yonan
`Trevor O’Neill
`STERNE KESSLER GOLDSTEIN & FOX PLLC
`mspecht-ptab@sternekessler.com
`jfitzsimmons-ptab@sternekessler.com
`kconklin-ptab@sternekessler.com
`dyonan-ptab@sternekessler.com
`toneill-ptab@sternekessler.com
`
`
`PATENT OWNER:
`
`Timothy Devlin
`DEVLIN LAW FIRM LLC
`tdevlin@devlinlawfirm.com
`
`
`
`4
`
`
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