TRW Automotive U.S. LLCv.Magna Electronics Inc.Download PDFPatent Trial and Appeal BoardFeb 22, 201612753433 (P.T.A.B. Feb. 22, 2016) Copy Citation Trials@uspto.gov Paper 27 Tel: 571-272-7822 Entered: February 22, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ TRW AUTOMOTIVE U.S. LLC, Petitioner, v. MAGNA ELECTRONICS, INC., Patent Owner. ____________ Case IPR2014-01497 Patent 8,531,278 B2 ____________ Before JAMESON LEE, BARRY L. GROSSMAN, and BART A. GERSTENBLITH, Administrative Patent Judges. GROSSMAN, Administrative Patent Judge. ORDER Termination of the Proceeding 35 U.S.C. § 317; 37 C.F.R. § 42.72 IPR2014-01497 Patent 8,531,278 B2 2 Pursuant to authorization by the Board, TRW Automotive U.S. LLC (“Petitioner”) and Magna Electronics, Inc. (“Patent Owner”) filed a Joint Motion to Terminate, jointly requesting termination of this inter partes review proceeding (Paper 26 (“Joint Motion”)) and requesting that we treat as “business confidential information” the submitted settlement agreement (Ex. 1009). Under 35 U.S.C. § 317(a), an inter partes review proceeding shall be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner, unless the Patent and Trademark Office has decided the merits of the proceeding before the request for termination is filed. The Board has not decided the merits of this proceeding. Under 35 U.S.C. § 317(b), any agreement or understanding between Patent Owner and Petitioner, including any collateral agreements referred to in such agreement or understanding, made in connection with, or in contemplation of, the termination of the proceeding shall be in writing, and a true copy of such agreement or understanding shall be filed in the Office. Patent Owner and Petitioner state in the Joint Motion that the parties have agreed to settle their dispute and have reached a written agreement to terminate this proceeding. Joint Motion 2. In support of the Joint Motion, the parties submitted Exhibit 1009, which they represent is a true and correct copy of the agreement. Id.; 35 U.S.C. § 317(b); 37 C.F.R. § 42.74(b). Upon consideration of the Joint Motion, we grant the Joint Motion and terminate this proceeding as to both Petitioner and Patent Owner without rendering a final written decision. 37 C.F.R. § 42.72. We also grant the parties’ joint request to maintain Exhibit 1009 as business confidential information in accordance with 37 C.F.R. § 42.74(c). IPR2014-01497 Patent 8,531,278 B2 3 ORDER Accordingly, it is: ORDERED that the Joint Motion to Terminate this proceeding (Paper 26) is granted and, accordingly, this proceeding is hereby terminated; and FURTHER ORDERED that the parties’ joint request that the agreement (Ex. 1009) submitted in support of the Joint Motion be treated as business confidential information, to be kept separate from the file of U.S. Patent No. 8,531,278 B2, and made available only under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is granted. IPR2014-01497 Patent 8,531,278 B2 4 FOR PETITIONER: Jon Trembath Timothy K. Sendek A. Justin Poplin Hissan Anis Allan Sternstein Douglas W. Link LATHROP & GAGE, LLP jtrembath@lathropgage.com tsendek@lathropgage.com jpoplin@lathropgage.com HAnis@lathropgage.com asternstein@lathropgage.com DLink@lathropgage.com patent@lathropgage.com FOR PATENT OWNER: Timothy A. Flory Terence J. Linn GARDNER, LINN, BURKHART & FLORY, LLP flory@glbf.com linn@glbf.com David K.S. Cornwell Mark W. Rygiel Daniel Yonan STERNE, KESSLER, GOLDSTEIN & FOX PLLC davidc-PTAB@skgf.com mrygiel-PTAB@skgf.com dyonan-PTAB@skgf.com Copy with citationCopy as parenthetical citation
