Garmin International, Inc.v.the Regents of the University of Michigan

Patent Trial and Appeal Board

Jul 29, 2015

11390000 (P.T.A.B. Jul. 29, 2015)

Trials@uspto.gov Paper 12
571-272-7822 Date: July 29, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

GARMIN INTERNATIONAL, INC.,
Petitioner,

v.

THE REGENTS OF THE UNIVRESITY OF MICHIGAN,
Patent Owner.
_______________

Case IPR2015-00769
Patent 7,234,351
_______________

Before JOSIAH C. COCKS, RAMA G. ELLURU, and
SCOTT C. MOORE, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION
Joint Motion to Terminate
37 C.F.R. §§ 42.5(a), 42.71(a)

IPR2015-00769
Patent 7,234,351

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On July 22, 2015, counsel for Petitioner, Garmin International, Inc.,
and Patent Owner, The Regents of the University of Michigan, Inc., jointly
sought, and were granted, authorization to file a motion to terminate this
proceeding on the basis that the parties have reached a settlement agreement.
Later that same day, the parties filed their Joint Motion to Terminate the
Inter Partes Review (“Mot.”). Paper 10. Along with their Joint Motion to
Terminate, the parties filed a Joint Request to File Settlement Agreement as
Business Confidential Information and be Kept Separate Under 35 U.S.C.
§ 317(b) and 37 C.F.R. § 42.74(c) (Paper 11), and a copy of the parties
Settlement Agreement (Ex. 1025).
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.”
35 U.S.C. § 317(b), however, also requires that:
[a]ny agreement or understanding between the
patent owner and a petitioner, including any
collateral agreements referred to in such agreement
or understanding, made in connection with, or in
contemplation of, the termination of an inter partes
review under this section shall be in writing and a
true copy of such agreement or understanding shall
be filed in the Office before the termination of the
inter partes review as between the parties.
In their Joint Motion to Terminate, the parties jointly request
termination of this proceeding pursuant to 35 U.S.C. § 317(a) and 37 C.F.R.
§ 42.72. Mot. 2. The parties indicate that termination is appropriate
because, inter alia, the parties have reached a settlement agreement
resolving all issues between them involving the patent at issue in this
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proceeding, and the Board has not yet issued a Decision on Institution or
decided the merits of this inter partes review proceeding. Id. The parties
also represent that they have complied with 35 U.S.C. § 317(b) and 37
C.F.R. § 42.74(b) by filing a true copy of the confidential settlement
agreement between the parties. Id. The parties further represent that there
are no “collateral agreements” that would need to be filed pursuant to 35
U.S.C. § 317(b) prior to termination of this proceeding. Id. at 3.
We recognize that a trial has not yet been instituted, but the
considerations here are similar. Under the present circumstances, we are
persuaded that it is appropriate dismiss the Petition pursuant to 37 C.F.R.
§§ 42.5(a) and 42.71(a) without rendering a final written decision.
ORDER
For the foregoing reasons, it is:
ORDERED that the Joint Motion to Terminate the Inter Partes
Review (Paper 10) is GRANTED;
FURTHER ORDERED that the Petition for Inter Partes Review of
the above-referenced patent is DISMISSED;
FURTHER ORDERED that the parties’ Joint Request to File
Settlement Agreement as Business Confidential Information and be Kept
Separate Under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (Paper 11) is
GRANTED; and
FURTHER ORDERED that the Settlement and License Agreement
(Exhibit 1025) be treated as business confidential information pursuant to
35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) and also remain designated as
“Parties and Board Only” in PRPS.

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For PETITIONER:
Adam P. Seitz
Jennifer C. Bailey
Erise IP, P.A.
adam.seitz@eriseip.com
jennifer.bailey@eriseip.com

For PATENT OWNER:

George D. Moustakas
Harness, Dickey & Pierce, PLC
gdmoustakas@hdp.com