TRW Automotive U.S. LLCv.Magna Electronics Inc.

Patent Trial and Appeal Board

Feb 23, 2016

13887727 (P.T.A.B. Feb. 23, 2016)

Trials@uspto.gov Paper 14
571-272-7822 Date: February 23, 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 IPR2015-00949
Patent 8,629,768 B2
Case IPR2015-00950
Patent 8,636,393 B21
____________

Before JAMES P. CALVE, RICHARD E. RICE, and
BART A. GERSTENBLITH, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

JUDGMENT
Termination of the Proceedings
35 U.S.C. § 317 and 37 C.F.R. § 42.72

1 This Order addresses an issue pertaining to both cases. We exercise our
discretion to issue a single Decision to be filed in each case. The parties are
not authorized to use this style heading for any other papers.
IPR2015-00949 & IPR2015-00950
Patent 8,629,768 B2 & Patent 8,636,393 B2

2

I. DISCUSSION
On February 15, 2016, the parties filed a Joint Motion to Terminate
Proceeding Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74 (“Joint
Motion to Terminate”) representing that they had settled all of their disputes
relating to U.S. Patent Nos. 8,629,768 B2 (“the ’768 patent”) and 8,636,393
B2 (“the ’393 patent”), and jointly requesting termination of inter partes
reviews in IPR2015-00949 and IPR2015-00950. See IPR2015-00949, Paper
11, 2; IPR2015-00950, Paper 13, 2. The parties also represent that they filed
a true copy of their Settlement and License Agreement (“Agreement”), and
requested that the Agreement be treated as business confidential information
pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74. See IPR2015-00949,
Paper 11, 2 and Ex. 1016; IPR2015-00950, Paper 13, 2 and Ex. 1015. The
parties represent that all related, pending district court lawsuits between the
parties will be dismissed pursuant to the Agreement. IPR2015-00949, Paper
11, 2–3; IPR2015-00950, Paper 13, 2–3.
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 patent owner, unless the Office has decided the
merits of the proceeding before the request for termination is filed.” In
addition, “[i]f no petitioner remains in the inter partes review, the Office
may terminate the review or proceed to a final written decision under
section 318(a).” 35 U.S.C. § 317(a).
We instituted inter partes review in both proceedings on
September 17, 2015. See IPR2015-00949, Paper 7; IPR2015-00950,
Paper 8. Oral argument has not been conducted in either case, and we have
not decided the merits of either case.
IPR2015-00949 & IPR2015-00950
Patent 8,629,768 B2 & Patent 8,636,393 B2

3

Upon consideration of the circumstances of each case, we determine
that it is appropriate to terminate both proceedings without rendering a final
written decision. See 37 C.F.R. § 42.72.
II. ORDER
Accordingly, it is:
ORDERED that the parties’ joint request to treat the Settlement and
License Agreement (IPR2015-00949, Ex. 1016 and IPR2015-00950,
Ex. 1015) as business confidential information under 35 U.S.C. § 317(b) and
37 C.F.R. § 42.74(c) is granted; and
FURTHER ORDERED that the parties’ Joint Motion to Terminate
Proceeding Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74 is granted in
each proceeding, and both proceedings are hereby terminated.

IPR2015-00949 & IPR2015-00950
Patent 8,629,768 B2 & Patent 8,636,393 B2

4

For PETITIONER:
Timothy K. Sendek
Allan Sternstein
A. Justin Poplin
Douglas W. Link
LATHROP & GAGE LLP
tsendek@lathropgage.com
asternstein@lathropgage.com
jpoplin@@lathropgage.com
dlink@lathropgage.com

For PATENT OWNER:

David K.S, Cornwell
STERNE, KESSLER, GOLDSTEIN & FOX PLLC
davidc-ptab@skgf.com

Timothy A. Flory
Terence J. Linn
GARDNER, LINN, BUCKHART & FLORY, LLP
flory@glbf.com
linn@glbf.com