Honeywell International Inc.v.Cree, Inc.

Patent Trial and Appeal Board

Oct 26, 2015

13593497 (P.T.A.B. Oct. 26, 2015)

Trials@uspto.gov Paper 10
Tel: 571-272-7822 Entered: October 26, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

HONEYWELL INTERNATIONAL, INC.,
Petitioner,

v.

CREE, INC.,
Patent Owner.
____________

IPR2015-01360 (Patent 8,860,058)
IPR2015-01361 (Patent 8,860,058)
IPR2015-01378 (Patent 8,659,034)
1

_____________

Before KEVIN F. TURNER, ERICA A. FRANKLIN, and
ROBERT J. WEINSCHENK, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

JUDGMENT
Termination of the Proceeding
37 C.F.R. § 42.72

1
This judgment addresses issues that are identical in each case. We,
therefore, exercise our discretion to issue one order to be filed in each case.
IPR2015-01360 (Patent 8,860,058)
IPR2015-01361 (Patent 8,860,058)
IPR2015-01378 (Patent 8,659,034)

2

On October 22, 2015, the parties filed joint motions to terminate the
proceedings pursuant to 35 U.S.C § 317. Paper 8.
2
In addition, and pursuant
to 35 U.S.C § 317 (b) and 37 C.F.R. § 42.74, the parties filed a true copy of
their written settlement agreement, Ex. 1017, and requested in the joint
motions that the settlement agreement be treated as business confidential
information and kept separate from the file of the involved patents, Paper 9.
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.” 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 true copy shall be filed with the Board
before termination of the trial.”
These cases are in the preliminary proceeding stage; a decision
whether to institute trial has not been made. As the parties jointly request
termination of the proceedings, and have filed their written settlement
agreement, we determine that it is appropriate to terminate the proceedings.
3

See 37 C.F.R. §§ 42.72, 42.73, 42.74.
As requested by the parties, the settlement agreement will be treated
as business confidential information and kept separate from the files of the
involved patents. 37 C.F.R. § 42.74(c).

2
Paper and Exhibit numbers cited in this judgment are the same in each
case.
3
Termination of these proceedings renders moot Petitioner’s Unopposed
Motions to Correct Exhibits 1007 and 1008, Paper 7.

IPR2015-01360 (Patent 8,860,058)
IPR2015-01361 (Patent 8,860,058)
IPR2015-01378 (Patent 8,659,034)

3

Accordingly, it is
ORDERED that the parties’ joint requests that the settlement
agreement be treated as business confidential information and be kept
separate from the files of the involved patents are GRANTED; and
FURTHER ORDERED that the joint motions to terminate the
proceedings are GRANTED; and
FURTHER ORDERED that the proceedings are TERMINATED.

IPR2015-01360 (Patent 8,860,058)
IPR2015-01361 (Patent 8,860,058)
IPR2015-01378 (Patent 8,659,034)

4

PETITIONER:

Jennifer Sklenar
Wallace Wu
ARNOLD & PORTER, LLP
Jennifer.Sklenar@aporter.com
Wallace.Wu@aporter.com

PATENT OWNER:

Peter Dichiara
Emily Whelan
Andrej Barbic
WILMER CUTLER PICKERING HALE AND DORR LLP
peter.dichiara@wilmerhale.com
emily.whelan@wilmerhale.com
andrej.barbic@wilmerhale.com