Mohawk Resources Ltd.v.Vehicle Service Group LLC

Patent Trial and Appeal Board

Sep 12, 2014

10055800 (P.T.A.B. Sep. 12, 2014)

Trials@uspto.gov Paper 15
Tel: 571-272-7822 Entered: September 12, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
MOHAWK RESOURCES LTD.,
Petitioner,
v.
VEHICLE SERVICE GROUP, LLC,
Patent Owner.
_______________

Case IPR2014-00464
Patent 6,983,196 B2
_______________

Before SCOTT E. KAMHOLZ, LYNNE E. PETTIGREW, and
JAMES A. TARTAL, Administrative Patent Judges.

KAMHOLZ, Administrative Patent Judge.

JUDGMENT
Termination of the Proceeding
37 C.F.R. § 42.74

Case IPR2014-00464
Patent 6,983,196 B2

2

The parties filed a joint motion to terminate the instant proceeding
(Paper 13 (“Mot.”)), and a true copy of their written settlement agreement
(Ex. 1015) made in connection with the termination, in accordance with
35 U.S.C. § 317 and 37 C.F.R. § 42.74(b). The parties also jointly requested
that their settlement agreement be treated as business confidential
information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 14.
For the reasons provided below, the joint motion to terminate is
granted. The joint request that the settlement agreement be treated as
business confidential information is also granted.
While the parties may agree to settle their issues related to the
involved patent, the Board is not a party to the settlement and may determine
independently any question of patentability. 37 C.F.R. § 42.74(a).
Patent Owner has not yet filed a Response, and the Board has not yet
decided the merits of this proceeding. The parties represent that they have
filed a stipulated dismissal in Vehicle Service Group, LLC v. Mohawk
Resources, Ltd., Case No. 4:13-cv-195-SEB-WGH (S.D. Ind.), and that there
are no other active proceedings involving U.S. Patent No. 6,983,196 B2
(“the ’196 patent). Mot. 2.
In view of the parties’ settlement agreement made in connection with
the instant proceeding in accordance with 35 U.S.C. § 317(b) and 37 C.F.R.
§ 42.74(b), we determine that it is appropriate to terminate the involvement
of Petitioner. Moreover, in view of the early stage of this proceeding, and
the absence of other proceedings involving the ’196 patent, we determine
that it also is appropriate to terminate the proceeding with respect to Patent
Owner. As a result, it is appropriate to enter judgment in the form of
termination. See 37 C.F.R. § 42.2.
Case IPR2014-00464
Patent 6,983,196 B2

3

Accordingly, it is
ORDERED that the joint motion to terminate IPR2014-00464 is
granted, and this proceeding is hereby terminated as to all parties, including
Petitioner Mohawk Resources Ltd., and Patent Owner Vehicle Service
Group, LLC; and
FURTHER ORDERED that the joint request that the settlement
agreement be treated as business confidential information and be kept
separate from the patent files under 35 U.S.C. § 317(b) and 37 C.F.R.
§ 42.74(c) is granted.

FOR PETITIONER:
Richard P. Beem
John R. Linzer
Beem Patent Law Firm
USPTO@BeemLaw.com
Richard@BeemLaw.com
JLinzer@BeemLaw.com

FOR PATENT OWNER:

Ann G. Schoen
Andrew B. Ulmer
Edwin R. Acheson, Jr.
Frost Brown Todd LLC
aschoen@fbtlaw.com
aulmer@fbtlaw.com
eacheson@fbtlaw.com
FBTIPLitigation@fbtlaw.com