Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 15
`
`Entered: February 2, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`TEXTRON INC.,
`Petitioner,
`
`v.
`
`NIVEL PARTS & MANUFACTURING CO., LLC,
`Patent Owner.
`
`____________
`
`PGR2017-00035
`PGR2017-00043
`Patent 9,481,265 B2
`____________
`
`
`
`
`
`
`Before JAMES A. TARTAL, TIMOTHY J. GOODSON, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`
`MAYBERRY, Administrative Patent Judge.
`
`
`
`DECISION1
`Granting Updated Joint Motion to Terminate Proceeding
`35 U.S.C. § 317(a); 37 C.F.R. § 42.72
`Granting Updated Request to Treat Settlement Documents
`as Confidential Business Information
`35 U.S.C. § 317(b); 37 C.F.R. § 42.74(c)
`
`
`
`1 This Order addresses the same issue in the proceedings listed above.
`Therefore, we issue one Order to be filed in each proceeding. The parties,
`however, are not authorized to use this style of filing.
`
`
`571-272-7822
`
`
`Paper No. 15
`
`Entered: February 2, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`TEXTRON INC.,
`Petitioner,
`
`v.
`
`NIVEL PARTS & MANUFACTURING CO., LLC,
`Patent Owner.
`
`____________
`
`PGR2017-00035
`PGR2017-00043
`Patent 9,481,265 B2
`____________
`
`
`
`
`
`
`Before JAMES A. TARTAL, TIMOTHY J. GOODSON, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`
`MAYBERRY, Administrative Patent Judge.
`
`
`
`DECISION1
`Granting Updated Joint Motion to Terminate Proceeding
`35 U.S.C. § 317(a); 37 C.F.R. § 42.72
`Granting Updated Request to Treat Settlement Documents
`as Confidential Business Information
`35 U.S.C. § 317(b); 37 C.F.R. § 42.74(c)
`
`
`
`1 This Order addresses the same issue in the proceedings listed above.
`Therefore, we issue one Order to be filed in each proceeding. The parties,
`however, are not authorized to use this style of filing.
`
`
`
`PGR2017-00035
`PGR2017-00043
`Patent 9,481,265 B2
`
`Pursuant to our authorization, on January 19, 2017, the parties filed a
`Joint Motion to Terminate Proceeding (Paper 112) and a Joint Request That
`Settlement Related Agreements be Treated as Business Confidential
`Information (Paper 12), seeking to terminate PGR2017-00035 and
`PGR2017-00043.3 Pursuant to 37 C.F.R. § 42.74(b), the parties also filed a
`true copy of their written settlement agreement (Ex. 2008) in each of the
`proceedings. Ex. 2008 is entitled “Binding Term Sheet” and contemplates
`the parties executing a formal agreement.
`On January 23, 2018, we informed the parties that we would not rule
`on the Joint Motion to Terminate Proceeding until they filed the formal
`agreement. On January 25, 2018, the parties filed an Updated Motion to
`Terminate Proceeding (Paper 13) and Updated Joint Request That
`Settlement Related Agreements be Treated as Business Confidential
`Information (Paper 14). Filed concurrent with these papers was a formal
`written settlement agreement (Ex. 2009).
`In the Updated Joint Motion to Terminate, the parties indicate that
`they have reached an agreement regarding all of their disputes involving
`U.S. Patent No. 9,481,265 B2 (the “’265 patent”). Paper 13, 3. This
`settlement includes PGR2017-00035 and PGR2017-00043 and a co-pending
`district court case. Id. at 3. The parties certify that “there are no other
`
`
`2 We cite to the record in PGR2017-00035. Similar documents were filed in
`each of the proceedings to which this Order applies.
`3 The parties filed separate Joint Motions to Terminate in PGR2017-00035
`and PGR2017-00043. See PGR2017-00035, Paper 11; PGR2017-00043,
`Paper 9. These motions are identical except for certain details unique to
`each proceeding. See id.
`
`
`
`2
`
`
`
`PGR2017-00035
`PGR2017-00043
`Patent 9,481,265 B2
`
`written or oral agreements or understandings, including any collateral
`agreements, between them” with respect to this settlement. Id. at 6.
`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
`request of the petitioner and patent owner, unless the Office has decided the
`merits of the proceeding before the request for termination is filed.” The
`parties indicate that, under the settlement agreement, Petitioner agrees to no
`longer participate in the proceedings. Paper 13, 4. The parties state that the
`Board has not reached the merits of the proceedings, as the Board just
`instituted trial in PGR-2017-00035 and the Board has yet to reach an
`institution decision in PGR2017-00043. Id. at 4, 5. The parties also indicate
`that terminating these proceedings will preserve the Board’s and parties’
`resources. Id. at 4.
`In view of the circumstances presented in this case, we agree that
`terminating these proceedings is proper at this time. Indeed, there are strong
`public policy reasons to favor settlement between the parties to a
`proceeding. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`48,768 (Aug. 14, 2012). When, as here, we have not rendered a Final
`Written Decision on the merits, we generally expect that the proceeding will
`terminate after the filing of a settlement agreement. See id.
`Based on the preceding, we determine that it is appropriate to
`terminate these proceedings without rendering a Final Written Decision as to
`the patentability of the challenged claims of the ’265 patent.
`
`
`
`3
`
`
`
`PGR2017-00035
`PGR2017-00043
`Patent 9,481,265 B2
`
`Accordingly, it is:
`ORDERED that the parties’ requests that the settlement agreements
`(PGR2017-00035, Exs. 2008 and 2009; PGR2017-00043, Exs. 2006 and
`2007) be treated as business confidential information and kept separate from
`the files of U.S. Patent No. 9,481,265 B2, under the provisions of 35 U.S.C.
`§ 317(b) and 37 C.F.R. § 42.74(c), are granted; and
`ORDERED that the Updated Joint Motions to Terminate these
`proceedings are granted, and these proceeding are hereby terminated.
`
`
`
`4
`
`
`
`PGR2017-00035
`PGR2017-00043
`Patent 9,481,265 B2
`
`For PETITIONER:
`
`Patrick A. Doody
`Bryan P. Collins
`PILLSBURY WINTHROP SHAW PITTMAN LLP
`patrick.doody@pillsburylaw.com
`bryan.collins@pillsburylaw.com
`
`
`
`For PATENT OWNER:
`
`Joel Weiss
`Edward M. Arons
`Jacob Baldinger
`WEISS & ARONS, LLP
`jweiss@weissarons.com
`earons@weissarons.com
`jbaldinger@weissarons.com
`
`
`
`
`
`5
`
`
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