Wavemarket, Inc. d/b/a Location Labsv.LocatioNet Systems, Ltd.

Patent Trial and Appeal Board

May 21, 2015

09677827 (P.T.A.B. May. 21, 2015)

Trials@uspto.gov Paper 38
571-272-7822 Entered: May 21, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

WAVEMARKET INC. d/b/a LOCATION LABS,
Petitioner,

v.

LOCATIONET SYSTEMS LTD.,
Patent Owner.
____________

Case IPR2014-00920
Patent 6,771,970 B1

Before KRISTEN L. DROESCH, GLENN J. PERRY, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

DROESCH, Administrative Patent Judge.

DECISION
Termination
35 U.S.C. § 317(b), 37 C.F.R. §§ 42.72, 42.74(c)

On May 13, 2015, the parties filed a Joint Motion to Terminate this
proceeding. Paper 36. Accompanying the Motion, the parties filed true
copies of a Settlement Agreement (Ex. 1121) and a Collateral Agreement
(Ex. 1122) associated with the Settlement Agreement. The parties also filed
a joint request for the Settlement Agreement and Collateral Agreement to be
Case IPR2014-00920
Patent 6,771,970 B1

2

treated as business confidential information, to be kept separate from the
patent file pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper
37.
The parties state in their Joint Motion to Terminate:
Termination of this proceeding as to both parties, without
rendering a final written decision, is appropriate because (i) the
trial is at a sufficiently early stage and the record is incomplete;
(ii) the parties have settled their disputes in this proceeding and
the related litigation; (iii) the parties to this inter partes review
agree that it should be terminated; and (iv) public policy
strongly favors settlement.

Paper 36, 3.
Specifically, the parties assert the record in this proceeding is
incomplete and at an early stage because Petitioner did not file a reply to
address Patent Owner’s Response, and no actions have been taken in
accordance with DUE DATES 4 through 7. Paper 36, 4. The parties also
indicate the only outstanding motions before the Board are a fully briefed
Motion to Seal and for Entry of Protective Order and a fully briefed Motion
for Additional Discovery. Id.
Based on the facts in the case before us, it is appropriate to terminate
this proceeding without rendering a final written decision. 37 C.F.R.
§ 42.72. Therefore, the joint motion to terminate the proceeding is granted.
As noted above, Patent Owner’s Motion for Additional Discovery
(Paper 16) and Petitioner’s Motion to Seal and for Entry of Protective Order
(Paper 26) are pending. Because this proceeding is terminated without
rendering a final written decision, Patent Owner’s Motion for Additional
Discovery and Petitioner’s Motion to Seal and for Entry of Protective Order
Case IPR2014-00920
Patent 6,771,970 B1

3

are dismissed as moot. The subject papers of Petitioner’s Motion to Seal,
Exhibit 1119 and Paper 27 (Patent Owner’s unredacted Response) are
hereby expunged.
ORDER
It is
ORDERED that that the Joint Motion to Terminate the proceeding is
granted;
FURTHER ORDERED that the parties’ joint request that the
Settlement Agreement (Ex. 1121) and Collateral Agreement (Ex. 1122) be
treated as business confidential information, to be kept separate from the file
of U.S. Patent No. 6,771,970, and made available only under the provisions
of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is granted;
FURTHER ORDERED that Patent Owner’s Motion for Additional
Discovery (Paper 16) is dismissed as moot;
FURTHER ORDERED that Petitioner’s Motion to Seal and for Entry
of Protective Order (Paper 26) is dismissed as moot;
FURTHER ORDERED that Exhibit 1119 and Paper 27 (Patent
Owner’s unredacted Response) are hereby expunged; and
FURTHER ORDERED that this proceeding is hereby
TERMINATED.
Case IPR2014-00920
Patent 6,771,970 B1

4

PETITIONER:
Mark L. Hogge
Scott W. Cummings
DENTONS US LLP
mark.hogge@dentons.com
scott.cummings@dentons.com

PATENT OWNER:
Thomas Engellenner
Reza Mollaaghababa
Andy Chan
PEPPER HAMILTON LLP
engellennert@pepperlaw.com
mollaaghababar@pepperlaw.com
chana@pepperlaw.com