FLIR Systems, Inc.v.e-Watch, Inc.

Patent Trial and Appeal Board

Jun 16, 2014

09594041 (P.T.A.B. Jun. 16, 2014)

Trial@uspto.gov Paper: 30
571-272-7822 Date: June 16, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

FLIR SYSTEMS, INC.
Petitioner,

v.

e-WATCH, INC.
Patent Owner.

Case IPR2014-00130
Patent 6,970,183

Before JAMESON LEE, MICHAEL W. KIM, and BARBARA A. PARVIS,
Administrative Patent Judges.

PARVIS, Administrative Patent Judge.

ORDER
Termination of Proceeding
37 C.F.R. § 42.72

On May 29, 2014, the parties filed a joint motion to terminate this
inter partes review with respect to both Petitioner (“FLIR Systems”) and
Patent Owner (“e-Watch”) (Paper 19) and, on June 5, 2014, the parties filed
a revised joint motion to terminate, which reflects correct exhibit numbers
Case IPR2014-00130
Patent 6,970,183

-2-
(Paper 24).1 On May 29, 2014, the parties filed a copy of their written
settlement agreement covering Patent 6,970,183 involved in this inter partes
review (Ex. 2001). The parties also filed a joint request to have their
settlement agreement treated as confidential business information under
35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (Paper 28).2 The parties
represent that the settlement agreement filed as Exhibit 2001 is a true and
accurate copy of their settlement agreement. Paper 24.
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
requirement for terminating review with respect to Petitioner is met.
Under 35 U.S.C. § 317(a), “If no petitioner remains in the inter partes
review, the Office may terminate the review or proceed to a final written
decision under section 318(a).” FLIR Systems is the sole petitioner in this
review. The Board has discretion to terminate this review with respect to e-
Watch as Patent Owner.

1 e-Watch filed an accompanying explanation as to why termination is
appropriate with respect to the Patent Owner. Ex. 2004. The revised joint
motion to terminate (Paper 24) and accompanying explanation (Ex. 2004)
considered together do not exceed the limit of 15 pages set by 37 C.F.R.
§ 42.24(a)(v).
2 A joint request was filed on May 29, 2014 (Paper 20) and, on June 10,
2014, the parties filed a corrected joint request to have their settlement
agreement treated as confidential business information under 35 U.S.C.
§ 317(b) and 37 C.F.R. § 42.74(c) (Paper 28).
Case IPR2014-00130
Patent 6,970,183

-3-
e-Watch indicates that the settlement agreement provides for dismissal
of related civil litigation between FLIR Systems and e-Watch, involving
Patent 6,970,183. Ex. 2004. The related civil action is identified as e-
Watch, Inc. v. FLIR Systems, Inc., Civil Case No. 4:13-cv-638 (S.D. Tex.).
Id.
The joint motion to terminate identifies other related litigation
involving Patent 6,970,183, and defendants other than FLIR Systems, which
will not be dismissed even if the Board grants the joint motion to terminate
proceeding. Paper 24. One of these defendants, Mobotix Corp., has filed a
petition for inter partes review of Patent 6,970,183, which is pending.
IPR2013-00255, Paper 1. However, Mobotix Corp. has not filed a motion
for joinder with this inter partes review. Additionally, on this record, the
other defendants in such other related litigation have not filed a petition for
inter partes review of Patent 6,970,183, and there is no pending motion by
any third party for joinder with this inter partes review.
e-Watch has not yet filed a Patent Owner Response in this proceeding.
The Board determines that in these circumstances it is appropriate to
terminate review both as to FLIR Systems and e-Watch without rendering a
final written decision. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72.
It is
ORDERED that the joint motion to terminate IPR2014-00130 is
granted, and this inter partes review is hereby terminated as to all parties
including FLIR Systems as the Petitioner and e-Watch as the Patent Owner;
and
Case IPR2014-00130
Patent 6,970,183

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FURTHER ORDERED that the parties’s joint request (Paper 28) to
have their settlement agreement (Exhibit 2001) treated as business
confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c)
is also granted.

For PETITIONER:
Peter C. Schechter
Tammy J. Terry
OSHA LIANG LLP
schechter@oshaliang.com
terry@oshaliang.com

Nicholas DiCeglieEDWARDS WILDMAN PALMER LLP
ndiceglie@edwardswildman.com

For PATENT OWNER:

Robert C. Curfiss
bob@curfiss.com