Zetec, Inc.v.Westinghouse Electric Company LLC

Patent Trial and Appeal Board

Mar 9, 2015

10121749 (P.T.A.B. Mar. 9, 2015)

Trials@uspto.gov
571-272-7822
Paper No. 10
Date Entered: March 9, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

ZETEC, INC.,
Petitioner,

v.

WESTINGHOUSE ELECTRIC CO.,
Patent Owner.

____________

Case IPR2015-00280
Patent 6,823,269 B2
____________

Before SCOTT R. BOALICK, Deputy Chief Administrative Patent Judge,
LINDA E. HORNER, KEVIN F. TURNER, BARBARA A. BENOIT, and
NEIL T. POWELL, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

JUDGMENT
Termination of Proceeding
37 C.F.R. § 42.73

IPR2015-00280
Patent 6,823,269 B2

2

On March 3, 2015, the parties filed a joint motion to terminate in the inter
partes review of U.S. Patent No. 6,823,269 B2. (“Motion,” Paper 8). With the
joint motion, the parties filed a copy of their written settlement agreement (Ex.
1114) covering the instant patent involved in this proceeding. The parties also
filed, concurrently, a joint request to have their settlement agreement treated as
confidential business information under 35 U.S.C. § 317(b) and 37 C.F.R.
§ 42.74(c). (Paper 9).
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.” The requirement for
terminating review with respect to Petitioner is met.
Under 35 U.S.C. § 317(a), “[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).” Zetec, Inc. is the sole petitioner in this review. The Board
has discretion to terminate this review with respect to the Patent Owner
(“Westinghouse Electric Company, LLC”). No decision on institution has been
issued, and, apart from the instant Motion, there are no outstanding motions in this
proceeding.
The Board acknowledges that the written settlement agreement (Ex. 1114)
appears to be a true copy, and that the parties seek settlement of the actions
between them, specifically including the instant proceeding, IPR2015-00280.
In the Motion, the parties represent that termination is warranted because the
Board has not instituted a review, and the Patent Owner’s period for preliminary
response has not yet expired. Motion 3. The parties also provide that the Parties’
related district court litigation has been dismissed with prejudice due to the
IPR2015-00280
Patent 6,823,269 B2

3

settlement, that there is no pending litigation involving the instant patent, and that
there is no related proceeding currently before the Office. Id. at 3-4. In addition,
the only parties to the related litigation involving the subject patent are Patent
Owner and Petitioner, and there is no pending motion by any third party for joinder
with this inter partes review.
The Board determines that, in the circumstances of this case, it is appropriate
to terminate the review both as to Petitioner and Patent Owner without rendering a
final written decision See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72.
It is
ORDERED that the joint motion to terminate IPR2015-00280 is
GRANTED, and this inter partes review is hereby terminated as to all parties; and
FURTHER ORDERED that the parties’ joint request to have their settlement
agreement treated as business confidential information under 35 U.S.C. § 317(b)
and 37 C.F.R. § 42.74(c) also is GRANTED.
IPR2015-00280
Patent 6,823,269 B2

4

PETITIONER:
Manny D. Pokotilow
Nicholas Tinari
CAESAR, RIVISE, BERNSTEIN, COHEN & POKOTILOW, LTD.
mpokotilow@crbcp.com
nmtinari@crbcp.com

PATENT OWNER:
Alan G Towner
Douglas Hall
PIETRAGALLO GORDON ALFANO BOSICK & RASPANTI, LLP
agt@pietragallo.com
dmh@pietragallo.com