`________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`MILWAUKEE ELECTRIC TOOL CORPORATION,
`Petitioner,
`
`v.
`
`BLACK & DECKER INC.,
`Patent Owner.
`Case No. PGR2020-00007
`
`Patent No. 10,389,139
`
`______________
`
`JOINT MOTION TO TERMINATE
`
`
`
`Joint Motion to Terminate
`PGR2020-00007
`
`As authorized by the Board in an email sent on February 19, 2020,
`
`pursuant to 37 C.F.R. §§ 42.71 and 42.74, Petitioner and Patent Owner jointly
`
`request termination of the proceeding related to the petition for post-grant
`
`review of U.S. Pat. No. 10,389,139 (Case. No. PGR2020-00007).
`
`The parties have settled their dispute and executed a settlement
`
`agreement to terminate this proceeding.
`
`The parties’ settlement agreement is in writing, and a true and correct
`
`copy is being filed under 37 C.F.R. § 42.74(b). The parties hereby represent
`
`that there are no other agreements, oral or written, between the parties made in
`
`connection with, or in contemplation of, the termination of this proceeding.
`
`The parties are also concurrently filing a joint request to treat the
`
`settlement agreement as business confidential information and keep it separate
`
`from the files of this proceeding and the involved patent under 35 U.S.C. §
`
`317(b) and 37 C.F.R. § 42.74(c).
`
`Dismissal of this proceeding under 35 U.S.C. § 327(a) and 37 C.F.R. §
`
`42.71(a) is proper because the Board has yet to issue an institution decision,
`
`1
`
`
`
`Joint Motion to Terminate
`PGR2020-00007
`
`and these proceedings are still at an early stage. See Samsung Elecs. Co. v.
`
`Fundamental Innovation Sys. Int’l, Ltd., IPR2018-00605 (PTAB July 16,
`
`2018) (Paper No. 10).
`
`Accordingly, the parties respectfully request termination of this
`
`proceeding.
`
`DATED this 20th day of February, 2020.
`
`Respectfully submitted,
`
` / Dion M. Bregman /
`Dion M. Bregman, Reg. No. 45,645
`Alexander B Stein, Reg. No. 71,397
`Morgan, Lewis & Bockius LLP
`1400 Page Mill Road
`Palo Alto, CA, 94304
`
`/ Jack S. Barufka /
`Jack S. Barufka, Reg. No. 37.087
`Benjamin L. Kiersz, Reg. No. 51,875
`Pillsbury Winthrop Shaw Pittman LLP
`1650 Tysons Boulevard
`McLean, Virginia 22102
`
`Counsel for Patent Owner, Black &
`Decker Inc.
`
`Jason C. White, Reg. No. 42,223
`Morgan, Lewis & Bockius LLP
`77 West Wacker Drive
`Chicago, IL, 60601
`
`Attorneys for Petitioner, Milwaukee
`Electric Tool Corporation
`
`2
`
`
`
`Joint Motion to Terminate
`PGR2020-00007
`
`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e), it is hereby certified that on February 20,
`
`2020, a copy of this JOINT MOTION TO TERMINATE was sent via email to
`
`Patent Owner’s counsel of record:
`
`jack.barufka@pillsburylaw.com
`benjamin.kiersz@pillsburylaw.com
`
`Dated: February 20, 2020
`
`Respectfully Submitted,
`
`/ Eveline Schmid /
`Eveline Schmid
`Legal Secretary at Morgan, Lewis &
`Bockius LLP
`
`3
`
`