TRW Automotive U.S. LLCv.Magna Electronics Inc.Download PDFPatent Trial and Appeal BoardFeb 23, 201613190931 (P.T.A.B. Feb. 23, 2016) Copy Citation Trials@uspto.gov Paper 14 Tel: 571-272-7822 Entered: February 23, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ TRW AUTOMOTIVE US LLC, Petitioner, v. MAGNA ELECTRONICS INC., Patent Owner. _______________ Case IPR2015-00960 Case IPR2015-009611 Patent 8,116,929 B2 _______________ Before PHILLIP J. KAUFFMAN, BARRY L. GROSSMAN, and ROBERT J. WEINSCHENK, Administrative Patent Judges. GROSSMAN, Administrative Patent Judge. ORDER Termination of the Proceeding 35 U.S.C. § 317 and 37 C.F.R. § 42.72 1 We use this caption to indicate that this Decision applies to, and is entered in, both cases. The parties are not authorized to use this caption. IPR2015-00960 IPR2015-00961 Patent 8,116,929 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 inter partes review proceedings IPR2015-00960 and IPR2015-00961 (Paper 13 in each proceeding (“Joint Motion”)). The Joint Motion also requests that we treat as “business confidential” the submitted settlement agreement (Ex. 1020 in IPR2015-00960; Ex. 1019 in IPR2015-00961) in support of the Joint Motion. 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 either proceeding. Under 35 U.S.C. § 317(b), any agreement or understanding between the Patent Owner and a 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 1020 (in IPR2015-00960) and Exhibit 1019 (in IPR2015-00961), which they represent is a true and correct copy of the agreement. Id. Upon consideration of the Joint Motion, we grant the Joint Motion and terminate each 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’ IPR2015-00960 IPR2015-00961 Patent 8,116,929 B2 3 joint request to maintain the submitted settlement agreements as business confidential in accordance with 37 C.F.R. § 42.74(c). ORDER Accordingly, it is: ORDERED that the Joint Motion to Terminate IPR2015-00960 and IPR2015-00961 is granted and, accordingly, these proceedings are hereby terminated; and FURTHER ORDERED that the parties’ joint request that the agreement (Ex. 1020 in IPR2015-00960; Ex. 1019 in IPR2015-00961) 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. 8,116,929 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. IPR2015-00960 IPR2015-00961 Patent 8,116,929 B2 4 FOR PETITIONER: Timothy K. Sendek Allan Sternstein A. Justin Poplin Jon Trembath Douglas Link LATHROP & GAGE LLP TSendek@lathropgage.com patent@lathropgage.com JPoplin@lathropgage.com jtrembath@lathropgage.com dlink@lathropgage.com FOR PATENT OWNER: David Cornwell Timothy Flory Terence Linn Jason Eisenberg STERNE, KESSLER, GOLDSTEIN & FOX PLLC davidc-PTAB@skgf.com Flory@glbf.com linn@glbf.com jasone-PTAB@skgf.com Copy with citationCopy as parenthetical citation