IPR2020-01231 (P.T.A.B. Jan. 20, 2021)

Quartz Auto Technologies LLC

Patent Trials and Appeals BoardJan 20, 2021

IPR2020-01231 (P.T.A.B. Jan. 20, 2021)

Trials@uspto.gov Paper 14 571-272-7822 Date: January 20, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ UBER TECHNOLOGIES, INC. Petitioner, v. QUARTZ AUTO TECHNOLOGIES LLC Patent Owner. ____________ Case IPR2020-01231 (Patent 6,446,004 B1) Case IPR2020-01232 (Patent 9,460,616 B1) ____________ Before KEN B. BARRETT, LYNNE H. BROWNE, and MIRIAM L. QUINN, Administrative Patent Judges. BROWNE, Administrative Patent Judge. ORDER Settlement Prior to Institution of Trial 35 U.S.C. § 42.74 IPR2020-01231, -01232 Patent 6,446,004, 9,460,616 2 I. INTRODUCTION In each of the above-captioned proceedings, Uber Technologies, Inc. (“Petitioner”) and Quartz Auto Technologies, LLC (“Patent Owner”) (collectively “the Parties”) filed a Joint Motion to Terminate. Paper 111 (“Joint Motion”). Accompanying each Joint Motion, the Parties filed a copy of their Settlement, Release, and License Agreement. Ex. 1024. As authorized by 37 C.F.R. § 42.74, the Parties filed a Joint Request to Keep Separate with the Joint Motion. Paper 12 (“Joint Request”). In each Joint Motion, the Parties state that they “jointly request termination” of the above-captioned proceedings. Joint Motion 1. The Parties assert that “[t]ermination of each proceeding is proper” because: 1) “the parties are jointly requesting termination;” 2) “the Board has not yet ‘decided the merits of the proceeding before the request for termination is filed’”; 3) “the related district court action, Quartz Auto Technologies LLC v. Uber Technologies, Inc., Civil Action No. 6-20-cv-00126, pending in the Western District of Texas, is being concurrently dismissed;” and 4) “the parties executed a confidential settlement agreement to terminate this proceeding.” Id. at 1–2 (citations omitted). There are strong public policy reasons to favor settlement between the parties to a proceeding. Office Patent Trial Practice Guide, 84 Fed. Reg. 64,280 (Nov. 21, 2019). Each of the above-captioned proceedings is in its preliminary stage, and we have not yet decided whether to institute a trial. In view of the early stage in these proceedings and the settlement agreement between the Parties, we determine that good cause exists and that it is 1 Citations herein are to the record in IPR2020-01231. Corresponding papers and exhibits may be found in the record of IPR2020-01232. IPR2020-01231, -01232 Patent 6,446,004, 9,460,616 3 appropriate to dismiss the petition and terminate each of these proceedings as to the Parties, without rendering a decision on institution or a final written decision. See 37 C.F.R. § 42.74. This Order does not constitute a final written decision pursuant to 35 U.S.C. § 318(a). II. ORDER Accordingly, it is: ORDERED that the Joint Motions to Terminate and Joint Requests to Keep Separate are granted; and FURTHER ORDERED that the preliminary proceedings in IPR2020- 01231 and IPR2020-01323 are terminated and their petitions are dismissed. For PETITIONER: Naveen Modi Joseph Palys Phillip Citroen Jason Heidemann PAUL HASTINGS LLP naveenmodi@paulhastings.com josephpalys@paulhastings.com phillipcitroen@paulhastings.com jasonheidemann@paulhastings.com For PATENT OWNER: Nicholas T. Peters David Gosse Timothy Maloney FITCH, EVEN, TABIN & FLANNERY LLP ntpete@fitcheven.com dgosse@fitcheven.com tpmalo@fitcheven.com