`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`CIZION, LLC d/b/a VULCAN INDUSTRIAL MANUFACTURING,
`Petitioner
`
`
`v.
`
`KERR MACHINE CO.,
`Patent Owner
`____________
`
`
`Case PGR2020-00065
`Patent 10,591,070
`
`____________
`
`AMENDED JOINT MOTION TO TERMINATE PROCEEDING
`
`
`
`
`
`
`Case No. PGR2020-00065
`Patent No. 10,591,070
`Pursuant to 35 U.S.C. § 327(a), Petitioner Cizion, LLC d/b/a Vulcan Industrial
`
`Manufacturing (“Vulcan”) and Patent Owner Kerr Machine, Co. (“Kerr”)
`
`(collectively, the “Parties”), through their respective counsel of record, jointly
`
`request termination of this PGR proceeding directed to U.S. Patent No. 10,591,070
`
`(“the ̓070 Patent”). The Board authorized the filing of this Amended Joint Motion
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`to Terminate via e-mail dated May 10, 2021.
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`The parties have reached a confidential settlement of their dispute with respect
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`to the ̓070 Patent, which includes an agreement to terminate this PGR proceeding
`
`and the underlying district court litigation. The confidential Settlement Agreements
`
`between Vulcan and Kerr have been made in writing, and true and correct copies of
`
`the Settlement Agreements between the Parties were previously filed and are filed
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`concurrently with this motion as Exhibits 1075 and Exhibit 1076, respectively
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`(which are submitted as “CONFIDENTIAL - Parties and Board Only”), pursuant to
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`35 U.S.C. § 327(b), along with an Amended Joint Request to Keep Settlement
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`Agreements Confidential and Separate, pursuant to 35 U.S.C. § 327(b). The Parties
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`request that the Settlement Agreements be treated as business confidential
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`information and be kept separate from the files of the involved patent, and be made
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`available only pursuant to 35 U.S.C. § 327 and 37 C.F.R. § 42.74(c).
`
`Pursuant to 37 C.F.R. §§ 42.5 and 42.72, the Board may terminate a trial
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`without rendering a final written decision, where appropriate, including pursuant to
`
`-2-
`
`
`
`Case No. PGR2020-00065
`Patent No. 10,591,070
`a joint request under 35 U.S.C. §§ 317(a) or 327(a). See Winplus N. Am., Inc. v.
`
`Pilot, Inc., IPR2018-00488, Paper 12 (PTAB Oct. 24, 2018). “There are strong
`
`public policy reasons to favor settlement between the parties to a proceeding. . . .
`
`The Board expects that a proceeding will terminate after the filing of a settlement
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`agreement, unless the Board has already decided the merits of the proceeding.”
`
`PTAB Consolidated Trial Practice Guide at 86 (November 2019).
`
`This proceeding was instituted on December 3, 2020. Paper 10. Patent Owner
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`filed a response on March 3, 2021. Paper 14. No subsequent briefing has occurred,
`
`and oral argument is set for September 1, 2021. Paper 11 at 10. As such, the Board
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`has not already decided the merits, making termination appropriate under 34 C.F.R.
`
`§ 42.72. Moreover, the underlying district court litigation involving the ’070 Patent
`
`has already been dismissed pursuant to the parties’ settlement agreement. Kerr
`
`Machine Co. v. Vulcan Industrial Holdings, LLC, C.A. No. 6-20-cv-00200, Dkt. 80
`
`(W.D. Tex. May 10, 2021).
`
`Therefore, for the foregoing reasons, Petitioner and Patent Owner respectfully
`
`request termination of Post Grant Review Case No. PGR2020-00065.
`
` Respectfully submitted,
`
`
`
`
`
`
`Dated: May 24, 2021
`
`
`
`
`
`/s/ Brenton R. Babcock
`
`Brenton R. Babcock
`
`Lead Counsel for Petitioner
`Registration No. 39,592
`
`-3-
`
`
`
`
`
`Case No. PGR2020-00065
`Patent No. 10,591,070
`
`
`
`/s/ James Hall
`
`
`James H. Hall
`
`Lead Counsel for Patent Owner
`Registration No. 66,317
`
`
`
`-4-
`
`
`
`Case No. PGR2020-00065
`Patent No. 10,591,070
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that a true and correct copy
`
`of the foregoing was served on Patent Owner via filing through the PTAB E2E
`
`System.
`
`
`
`
`
`
`
`
`
`Dated: May 24, 2021
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully Submitted,
`
`/s/ Brenton R. Babcock
`
`Brenton R. Babcock (Reg. No. 39,592)
`Lead Counsel for Petitioner
`
`-5-
`
`
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