Michigan Motor Technologies LLC

Patent Trials and Appeals Board

Apr 12, 2021

IPR2020-00446 (P.T.A.B. Apr. 12, 2021)

Trials@uspto.gov Paper 22
571-272-7822 Entered: April 12, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

VOLKSWAGEN GROUP OF AMERICA, INC.,
Petitioner,

v.

MICHIGAN MOTOR TECHNOLOGIES LLC,
Patent Owner.

____________

IPR2020-00446
Patent 6,763,804 B2
____________

Before NEIL T. POWELL, SCOTT B. HOWARD, and
SEAN P. O’HANLON, Administrative Patent Judges.

O’HANLON, Administrative Patent Judge.

TERMINATION
Due to Settlement After Institution of Trial
35 U.S.C. § 317; 37 C.F.R. § 42.74

IPR2020-00446
Patent 6,763,804 B2

2
I. INTRODUCTION
On March 19, 2021, with Board authorization, Petitioner and Patent
Owner filed a joint motion to dismiss the petition and terminate the above-
captioned proceeding. Paper 20. Along with the motion, the parties filed a
copy of a Confidential Agreement (Ex. 1100), as well as a joint request to
treat the Confidential Agreement as business confidential information
(Paper 21). See 37 C.F.R. § 42.74(c) (2019) (“A party to a settlement may
request that the settlement be treated as business confidential information
and be kept separate from the files of an involved patent or application.”).
II. DISCUSSION
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 the patent owner, unless the Office has decided
the merits of the proceeding before the request for termination is filed.” It is
also provided in 35 U.S.C. § 317(a) that if no petitioner remains, the Office
may terminate the inter partes review.
In this case, the Board issued a decision to institute inter partes
review. Paper 9. However, the Board has not yet decided the merits of the
proceeding or entered a final written decision. In the joint motion, the
parties state that they have settled their dispute and have reached an
agreement to request termination of this inter partes review. Paper 20, 1.
Accordingly, in the circumstances present here, we determine that it is
appropriate to terminate the proceeding. 37 C.F.R. § 42.71(a). This Order
does not constitute a final written decision pursuant to 35 U.S.C. § 318(a).
IPR2020-00446
Patent 6,763,804 B2

3
The parties also ask that the Confidential Agreement be treated as
business confidential information and be kept separate from the file of the
challenged patent. Paper 21. We determine that it is appropriate to treat the
Confidential Agreement as business confidential information, and to keep
that document separate from the files of the challenged patent, pursuant to
37 C.F.R. § 42.74(c).
The parties further ask the Board to order that, “in the event a person
or entity makes a written request, as stated in 37 C.F.R. § 42.74(c)(1)-(2), for
access to the [Confidential Agreement], that any such written request be
served upon the parties on the day the written request is provided to the
Board.” Paper 21, 1. The statutory and regulatory provisions governing
access to such settlement agreements stand on their own, and therefore, we
deny the parties’ request here.
III. ORDER
Accordingly, it is:
ORDERED that the joint motion is granted and this proceeding is
terminated with respect to Petitioner and Patent Owner;
FURTHER ORDERED that the joint request that the Confidential
Agreement (Ex. 1100) be treated as business confidential information, to be
kept separate from the patent file, is granted in this proceeding; and
FURTHER ORDERED that the joint request that the Board order that,
in the event a person or entity makes a written request for access to the
Confidential Agreement, that any such written request be served upon the
parties on the day the written request is provided to the Board, is denied in
this proceeding.
IPR2020-00446
Patent 6,763,804 B2

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For PETITIONER:
Michael D. Specht
Jason A. Fitzsimmons
Danny E. Yonan
Richard Bemben
Tyler J. Dutton
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
mspecht-PTAB@sternekessler.com
jfitzsimmons-PTAB@sternekessler.com
dyonan-PTAB@sternekessler.com
rbemben-PTAB@sternekessler.com
tdutton-PTAB@sternekessler.com
PTAB@sternekessler.com.
For PATENT OWNER:
Timothy Devlin
Robyn T. Williams
DEVLIN LAW FIRM LLC
TD-PTAB@devlinlawfirm.com
dlflitparas@devlinlawfirm.com
rwilliams@devlinlawfirm.com