General Growth Properties, Inc., et al v George Peschke

Patent Trial and Appeal Board

Apr 9, 2014

09697470 (P.T.A.B. Apr. 9, 2014)

Trials@uspto.gov Paper 36
571-272-7822 Entered: April 9. 2014
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

GENERAL GROWTH PROPERTIES, INC.,
THE MACERICH PARTNERSHIP, L.P., and
WESTFIELD CONCESSION MANAGEMENT, LLC,
Petitioners,

v.

GEORGE PESCHKE,
Patent Owner.
____________

Case IPR2013-00400
Patent 6,397,143

Before MICHAEL R. ZECHER, JUSTIN T. ARBES, and
RICHARD E. RICE, Administrative Patent Judges.

RICE, Administrative Patent Judge.

TERMINATION
Termination of Proceeding
37 C.F.R. § 42.72
Case IPR2013-00400
Patent 6,397,143

2
On April 6, 2014, Patent Owner and Petitioners, General Growth
Properties, Inc., The Macerich Partnership, L.P. and Westfield Concession
Management, LLC (collectively, “Petitioners”),
1
filed a joint motion (Paper
31) to terminate this inter partes review, as well as a joint request (Paper 32)
to have their settlement agreements treated as confidential business
information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). The parties
also filed true copies of their written settlement agreements. Exs. 2002,
2003, and 2004. The parties stated in their joint motion that they “have
settled their dispute, and have reached agreement to terminate this inter
partes review.” Paper 31, 2. In addition, the parties identified eight pending
district court litigations involving U.S. Patent No. 6,397,143 (“the ’143
Patent”). Id. at 4-7. The parties also identified ten other district litigations
(including the settled litigations between Patent Owner and Petitioners,
referenced above) involving the ’143 Patent that either have been terminated
already, or are pending termination pursuant to a settlement agreement. Id.
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
Board instituted a trial in this proceeding on November 8, 2013, (Paper 19)
but has not decided the merits of the proceeding.
Further, under 37 C.F.R. § 42.74(b), “[a]ny agreement or
understanding between the parties made in connection with, or in
contemplation of, the termination of a proceeding shall be in writing and a

1
This proceeding has been terminated with respect to two of the original
Petitioners, Boulevard Invest LLC and MOAC Mall Holdings, LLC.
Case IPR2013-00400
Patent 6,397,143

3
true copy shall be filed with the Board before termination of the trial.” See
also 37 C.F.R. §§ 42.72; 42.73(a). As the parties have filed their written
settlement agreements, and the litigation related to this proceeding has been
settled, we determine that it is appropriate to terminate this proceeding with
respect to Petitioners without rendering a final written decision. See 37
C.F.R. §§ 42.72; 42.73(a); 42.74.

ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the joint request of the parties that the settlement
agreements (Exhibits 2002, 2003, and 2004) be treated as business
confidential information under 35 U.S.C. § 317(b) and 37 C.F.R.
§ 42.74(c) is GRANTED; and
ORDERED that the joint motion of Patent Owner and Petitioners to
terminate this proceeding is GRANTED, and this proceeding is hereby
terminated.
Case IPR2013-00400
Patent 6,397,143

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PETITIONERS:

Jeffrey A. Finn
Michael S. Tomsa
KATTEN MUCHIN ROSENMAN LLP
Jeffrey.Finn@Kattenlaw.com
Michael.Tomsa@Kattenlaw.com

PATENT OWNER:
Tarek N. Fahmi
Michael A. Davitz
FAHMI, SELLERS, EMBERT & DAVITZ
tarek.fahmi@fseip.com
michael.davitz@fseip.com