Lorex Canada, Inc.v.e-WATCH, Inc.

Patent Trial and Appeal Board

Jun 5, 2014

11111575 (P.T.A.B. Jun. 5, 2014)

Trials@uspto.gov Paper 26
571-272-7822 Entered: June 5, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

LOREX CANADA, INC.
Petitioner

v.

e-WATCH, INC.
Patent Owner

Case IPR2013-00521
Patent 7,839,926

Before JAMESON LEE, TREVOR M. JEFFERSON, and
MATTHEW R. CLEMENTS, Administrative Patent Judges.

CLEMENTS, Administrative Patent Judge.

ORDER
Joint Motion to Terminate
37 C.F.R. § 42.72

Case IPR2013-00521
Patent 7,839,926

2
On May 29, 2014, the parties filed a joint motion to terminate the
instant proceeding under 35 U.S.C. § 317(a). Paper 15. Along with the
motion, the parties filed a Joint Request to File a True Copy of the
Settlement Agreement as Business Confidential Information Pursuant to 35
U.S.C. § 317 (Paper 18), and filed a true copy of the settlement agreement
(Exhibit 2001).
On June 2, 2014, the parties filed a redacted copy of the Settlement
Agreement. Exhibit 2002.
On June 3, 2014, a conference call was held between respective
counsel for Petitioner and Patent Owner, and Judges Clements and Parvis.
The Board explained that the joint motion to terminate erroneously refers to
the redacted copy of the settlement agreement as “Exhibit 1.” The Board
instructed the parties to file a revised joint motion to terminate that refers to
the redacted copy of the settlement agreement as “Exhibit 2002.” Later that
day, the parties filed a revised joint motion to terminate the instant
proceeding under 35 U.S.C. § 317(a). Paper 19. The revised joint motion to
terminate, however, erroneously refers to Exhibit 2001 as a redacted copy of
the Settlement Agreement.
On June 5, 2014, the Board expunged the revised joint motion to
terminate and authorized the parties to file a second revised joint motion to
terminate that characterizes correctly Exhibit 2001. Paper 22. Later the
same day, the parties filed a replacement revised joint motion to terminate
the instant proceeding under 35 U.S.C. § 317(a). Paper 25. For the reasons
discussed below, the motion is granted.
Case IPR2013-00521
Patent 7,839,926

3
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.” In their
joint motion, the parties request termination of the instant proceeding
because they have settled their dispute and have reached agreement to
terminate this inter partes review and the co-pending litigation, and because
the Office has not yet decided the merits of the proceeding. Paper 25, 2-3.
Patent Owner further indicates that the parties have agreed to dismiss
the related litigation (Ex. 2004, 1). The joint motion indicates that there is
no other litigation involving the ’926 patent pending. Paper 25 at 3.
The parties are reminded that the Board is not a party to the settlement
and that, even if the parties agree to settle any issue in a proceeding, the
Board may independently determine 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. 48,756, 48,768 (Aug. 14, 2012). This
proceeding is still in the preliminary stages. The Patent Owner’s Response
has not yet been filed. The Board is persuaded that, under these
circumstances, it is appropriate to terminate this proceeding as to both
Petitioner and Patent Owner without rendering a final written decision. 37
C.F.R. § 42.72.
Case IPR2013-00521
Patent 7,839,926

4
Accordingly, it is:
ORDERED that the revised joint motion to terminate this proceeding
is GRANTED and this proceeding is hereby terminated as to both Petitioner
and Patent Owner; and
FURTHER ORDERED that the parties’ joint request that the
settlement agreement (Exhibit 2001) be treated as business confidential
information, kept separate from the file of the involved patent, and made
available only to Federal Government agencies on written request, or to any
person on a showing of good cause, under the provisions of 35 U.S.C.
§ 317(b) and 37 C.F.R. § 42.74(c), is GRANTED.
Case IPR2013-00521
Patent 7,839,926

5
For PETITIONER:
Peter C. Schechter
Tammy J. Terry
OSHA LIANG LLP
Schechter@oshaliang.com
Terry@oshaliang.com

For PATENT OWNER:
Robert C. Curfiss
bob@curfiss.com