General Electric Companyv.TAS Energy, Inc.

Patent Trial and Appeal Board

Oct 3, 2014

09961711 (P.T.A.B. Oct. 3, 2014)

Trials@uspto.gov Paper 19
571-272-7822 Entered: October 3, 2014

1

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

GENERAL ELECTRIC COMPANY,
Petitioner,

v.

TAS ENERGY, INC.,
Patent Owner.
____________

Case IPR2014-00162
Patent 6,470,686
____________

Before JOSIAH C. COCKS, BARRY L. GROSSMAN, and
PHILLIP J. HOFFMANN, Administrative Patent Judges.

COCKS, Administrative Patent Judge.

DECISION
Termination of the Proceeding
35 U.S.C. § 317(a) and 37 C.F.R. § 42.72

IPR2014-00162
Patent 6,470,686

2
On September 22, 2014, General Electric, Inc. (“GE”) and TAS
Energy Inc. (“TAS”) (collectively referred to as “the Parties”) filed a joint
motion to terminate this inter partes review involving U.S. patent 6,470,686
(“the ’686 patent”).
1
Paper 17 (“Joint Motion to Terminate”); see 35 U.S.C.
§ 317(b); 37 C.F.R. § 42.72. Along with the Joint Motion to Terminate, the
Parties filed a copy of their written settlement and licensing agreement
(Exhibit 2006) covering the ’686 patent, as well as a joint request (Paper 18)
to have their settlement and licensing agreement treated as business
confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
The Parties state in their Joint Motion to Terminate that:
Termination of Case No. IPR2014-00162 by the PTAB
would be appropriate. The IPR Proceeding was filed on
November 18, 2013 as a petition by GE for inter partes review
of 6,470,686. The Board instituted review on May 13, 2014.
TAS provided its Patent Owner Response on August 13, 2014.
GE’s reply briefing is not due until November 13, 2014.
The parties have entered into a Confidential Settlement
Agreement (attached hereto as Exhibit TAS-2006, filed under
seal). The Confidential Agreement resolves the parties’
disputes with respect to U.S. Patent No. 6,470,686, including
by (i) requiring TAS and GE to seek dismissal of this IPR and
(ii) requiring TAS to dismiss its claims in TAS Energy v. San
Diego Gas & Electric, Case No. 12-cv-2777 (S.D. Cal.)
(named defendant San Diego Gas & Electric is GE’s customer).
Therefore, termination of this case is appropriate because (i)
the case is at a sufficiently early stage of the trial, (ii) the parties
have resolved their disputes, (iii) Patent Owner has agreed to
dismiss its litigation claims, and (iv) the parties to this case
agree that this inter partes review should be terminated.

1
Authorization for the motion was given in e-mail correspondence from
Board personnel on September 22, 2014.
IPR2014-00162
Patent 6,470,686

3
The Parties are reminded that the Board is not a party to the
settlement, and may identify independently any question of patentability. 37
C.F.R. § 42.74(a). Generally, however, the Board expects that a proceeding
will terminate after the filing of a settlement agreement. See, e.g., Office
Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). A
decision by the Board to institute was entered on May 13, 2014. Paper 11.
TAS filed a Patent Owner Response on August 13, 2014. Paper 16. GE has
not yet filed any reply. Briefing, thus, has not been completed in this
proceeding. As noted above, TAS also has agreed to dismiss the litigation
associated with the ’686 patent. Under the circumstances, based on the
record before us, the Board determines that it is appropriate to terminate this
proceeding without rendering a final written decision. See 37 C.F.R.
§ 42.72.
ORDER
In consideration of the foregoing, it is
ORDERED that, as was timely requested by the parties, the settlement
agreement (Exhibit 2006) will be treated as business confidential
information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c);
FURTHER ORDERED that the joint motion to terminate this
proceeding is GRANTED and this proceeding is hereby TERMINATED.
IPR2014-00162
Patent 6,470,686

4
PETITIONER:

Deakin Lauer
deakin.lauer@klarquist.com

Joseph Jakubek
joseph.jakubek@klarquist.com

PATENT OWNER:

Thomas King
ipr.thomas.king@haynesboone.com

Kenneth Parker
ken.parker.ipr@haynesboone.com