Mercedes-Benz USA, LLCv.Z-Dimensional, LLCDownload PDFPatent Trial and Appeal BoardJan 5, 201511681760 (P.T.A.B. Jan. 5, 2015) Copy Citation Trials@uspto.gov Paper 11 Tel: 571-272-7822 Entered: January 5, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ MERCEDES-BENZ USA, LLC, Petitioner, v. Z-DIMENSIONAL, LLC, Patent Owner. ____________ Case IPR2014-01521 Patent 7,729,530 B2 Before JUSTIN T. ARBES, DAVID C. McKONE, and PETER P. CHEN, Administrative Patent Judges. ARBES, Administrative Patent Judge. JUDGMENT Termination of the Proceeding 37 C.F.R. § 42.72 IPR2014-01521 Patent 7,729,530 B2 2 On December 31, 2014, the parties filed a joint motion (Paper 10) to terminate the instant proceeding on the basis of a settlement reached by the parties. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. The parties also filed a copy of their written settlement agreement (Exhibit 1009) and requested in the joint motion that the settlement agreement be treated as business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). The instant proceeding is still in the preliminary stages. Patent Owner did not file a preliminary response by the three-month deadline, see Paper 4 at 2, and we have not yet determined whether to institute an inter partes review. The parties further represent that they have agreed to dismissal with prejudice of the pending district court case between the parties involving U.S. Patent No. 7,729,530 B2 (“the ’530 patent”). See Paper 10 at 1–2 (citing Ex. 1009). The district court’s electronic docketing system indicates that the case was dismissed with prejudice on December 30, 2014. Although the parties identify a number of other pending district court cases where the ’530 patent is being asserted against other defendants, see Paper 1 at 4–5; Paper 9 at 1, given the status of this proceeding and the parties’ agreement, we determine that it is appropriate to terminate the proceeding without rendering a final written decision under 37 C.F.R. § 42.72. In consideration of the foregoing, it is hereby: ORDERED that the parties’ joint request that the settlement agreement (Exhibit 1009) be treated as business confidential information, kept separate from the file of U.S. Patent No. 7,729,530 B2, and made available only to Federal Government agencies on written request, or to any person on a showing of good cause, under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is granted; and IPR2014-01521 Patent 7,729,530 B2 3 FURTHER ORDERED that the joint motion to terminate the proceeding is granted and this proceeding is hereby terminated. 1 1 The ’530 patent previously was challenged in Case IPR2014-00841. The parties are referred to our decision in that proceeding regarding requests to expunge settlement agreements filed pursuant to 35 U.S.C. § 317(b). See IPR2014-00841, Paper 15. IPR2014-01521 Patent 7,729,530 B2 4 PETITIONER: Celine Jimenez Crowson Raymond A. Kurz Joseph J. Raffetto HOGAN LOVELLS US LLP celine.crowson@hoganlovells.com raymond.kurz@hoganlovells.com joseph.raffetto@hoganlovells.com PATENT OWNER: Ronald W. Burns rburns@burnsiplaw.com Kenneth Emanuelson ROSS JOYNER PLLC kemanuelson@rossjoynerlaw.com Copy with citationCopy as parenthetical citation