GoerTek, Inc.v.Knowles Electronics, LLC

Patent Trial and Appeal Board

Mar 3, 2015

11276025 (P.T.A.B. Mar. 3, 2015)

Trials@uspto.gov
571-272-7822 
Paper No. 62
Date Entered: March 3, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

GOERTEK, INC. and GOERTEK ELECTRONICS, INC.,
Petitioner,

v.
KNOWLES ELECTONICS, LLC,
Patent Owner.
____________
Cases IPR2013-00523 (Patent 8,121,331 B2)
IPR2013-00614 (Patent 7,439,616 B2)
IPR2014-01009 (Patent 8,018,049 B2)1
____________

Before KEVIN F. TURNER, BENJAMIN D. M. WOOD, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

JUDGMENT
Termination of Proceeding
37 C.F.R. § 42.73

1 This order addresses a similar issue in the three proceedings. Therefore, we
exercise discretion to issue one order to be filed in each proceeding. The parties,
however, are not authorized to use this style of heading in subsequent papers.
IPR2013-00523 (Patent 8,121,331 B2)
IPR2013-00614 (Patent 7,439,616 B2)
IPR2014-01009 (Patent 8,018,049 B2) 

2 

On February 27, 2015, the parties filed joint motions to terminate in each of
three inter partes reviews (IPR2013-00523, IPR2013-00614, and IPR2014-01009)
of Patent Nos. 8,121,331 B2, 7,439,616 B2, and 8,018,049 B2, respectively.
(“Motions,” Papers 49, 59, 20, respectively, with the Motions being largely
identical except with respect to the specific patents and the stages of the
proceedings). With the joint motions, the parties filed copies of their written
settlement agreements (Exs. 2040 and 2041 in IPR2013-00523, with additional
copies in the other proceedings) covering the patents involved in these
proceedings. The parties also filed, concurrently, joint requests 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). (Papers 50, 60, 21, respectively).
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), “[i]f 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).” GoerTek, Inc. and GoerTek Electronics, Inc.  are,
collectively, the sole petitioner in these reviews. The Board has discretion to
terminate these reviews with respect to the patent owner (“Knowles Electronics”).
No final written decision has been issued, and, apart from the instant Motions,
there are no outstanding motions in these proceedings.
The Board acknowledges that the written settlement agreements (Exs. 2040,
2041) appear to be true copies, and that the parties seek settlement of the actions
IPR2013-00523 (Patent 8,121,331 B2)
IPR2013-00614 (Patent 7,439,616 B2)
IPR2014-01009 (Patent 8,018,049 B2) 

3 

between them, specifically including the instant proceedings, IPR2013-00523,
IPR2013-00614, and IPR2014-01009.
In the Motions, the parties represent that termination with respect to
Petitioner is warranted because the final merits of the proceedings have not been
decided. Motions 3. The parties also request that we terminate these proceedings
with respect to Patent Owner as well, for several reasons. Id. at 4-7. The parties
argue that there are strong public policy reasons to favor settlement, and that the
parties have worked diligently to reach a private resolution of all of the disputes
relating to the subject patents. Id. The parties additionally argue that termination
will further allow the Board to conserve its resources, allowing the Board to focus
on other, ongoing disputes. Id. In addition, the parties distinguish the instant
proceedings from other cases where we did not terminate specific proceedings with
respect to patent owners because those specific proceedings were in an advanced
stage. Id. at 6-7. In addition, the only parties to the related litigations involving
the subject patents are Patent Owner and Petitioner, and there is no pending motion
by any third party for joinder with these inter partes reviews.
The Board determines that, in the circumstances of these cases, it is
appropriate to terminate the reviews both as to Petitioner and Patent Owner
without rendering final written decisions See 35 U.S.C. § 317(a); 37 C.F.R.
§ 42.72.
It is
ORDERED that the joint motions to terminate IPR2013-00523, IPR2013-
00614, and IPR2014-01009 are GRANTED, and these inter partes reviews are
hereby terminated as to all parties; and
IPR2013-00523 (Patent 8,121,331 B2)
IPR2013-00614 (Patent 7,439,616 B2)
IPR2014-01009 (Patent 8,018,049 B2) 

4 

FURTHER ORDERED that the parties’ joint requests to have their
settlement agreements treated as business confidential information under the 35
U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) are also GRANTED. 
IPR2013-00523 (Patent 8,121,331 B2)
IPR2013-00614 (Patent 7,439,616 B2)
IPR2014-01009 (Patent 8,018,049 B2) 

5 

For PETITIONER:
Paul E. McGowan
Xin “Kevin” He
Troutman Sanders, LLP
paul.mcgowan@troutmansanders.com
kevin.he@troutmansanders.com

For PATENT OWNER
Andrea G. Reister
Gregory S. Discher
Jay I. Alexander
Covington & Burling LLP
areister@cov.com
gdischer@cov.com
jalexander@cov.com