Michigan Motor Technologies LLC

Patent Trials and Appeals Board

Apr 20, 2021

IPR2020-00445 (P.T.A.B. Apr. 20, 2021)

Trials@uspto.gov Paper 22
Tel: 571-272-7822 Date: April 20, 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.
____________

IPR2020-00445
Patent 6,581,565 B2
____________

Before NEIL T. POWELL, BARBARA A. PARVIS, and
SEAN P. O’HANLON, Administrative Patent Judges.

POWELL, Administrative Patent Judge.

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

IPR2020-00445
Patent 6,581,565 B2

2
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) (a party to a settlement may request
that the settlement agreement be treated as business confidential and be kept
separate from the patent file).
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 12. 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 they jointly 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).
The parties also ask that the Confidential Agreement be treated as
business confidential information and be kept separate from the file of the
challenged patents. Paper 21. We determine that it is appropriate to treat
the Confidential Agreement as business confidential information, and to
IPR2020-00445
Patent 6,581,565 B2

3
keep that document separate from the files of the challenged patents,
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.
For the foregoing reasons, 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.

IPR2020-00445
Patent 6,581,565 B2

4
PETITIONER:

Michael Specht
Jason Fitzsimmons
Daniel Yonan
Kyle E. Conklin
John Higgins
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
mspecht-PTAB@sternekessler.com
jfitzsimmons-PTAB@sternekessler.com
dyonan-PTAB@sternekessler.com
kconklin-PTAB@sternekessler.com
jhiggins-PTAB@sternekessler.com

PATENT OWNER:

Timothy Devlin
DEVLIN LAW FIRM LLC
tdevlin@devlinlawfirm.com