Trials@uspto.gov Paper 40
`571-272-7822 Entered: March 11, 2015
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICRO MOTION, INC.,
`Petitioner,
`
`v.
`
`INVENSYS SYSTEMS, INC.,
`Patent Owner.
`____________
`
`IPR2014-00167 (Patent 7,505,854 B2)
`IPR2014-00170 (Patent 6,311,136 B1)
`IPR2014-00178 (Patent 7,136,761 B2)
`IPR2014-00179 (Patent 7,124,646 B2)
`IPR2014-00390 (Patent 6,754,594 B2)
`IPR2014-00392 (Patent 8,000,906 B2)
`IPR2014-00393 (Patent 7,571,062 B2)1
`____________
`
`Before WILLIAM V. SAINDON, MICHAEL R. ZECHER, and
`JENNIFER M. MEYER, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`1 This Order addresses an issue that is identical in all seven cases.
`We exercise our discretion to issue one Order to be filed in each case.
`The parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`
`
`
`571-272-7822 Entered: March 11, 2015
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICRO MOTION, INC.,
`Petitioner,
`
`v.
`
`INVENSYS SYSTEMS, INC.,
`Patent Owner.
`____________
`
`IPR2014-00167 (Patent 7,505,854 B2)
`IPR2014-00170 (Patent 6,311,136 B1)
`IPR2014-00178 (Patent 7,136,761 B2)
`IPR2014-00179 (Patent 7,124,646 B2)
`IPR2014-00390 (Patent 6,754,594 B2)
`IPR2014-00392 (Patent 8,000,906 B2)
`IPR2014-00393 (Patent 7,571,062 B2)1
`____________
`
`Before WILLIAM V. SAINDON, MICHAEL R. ZECHER, and
`JENNIFER M. MEYER, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`1 This Order addresses an issue that is identical in all seven cases.
`We exercise our discretion to issue one Order to be filed in each case.
`The parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`
`
`
`
`
`
`IPR2014-00167 (Patent 7,505,854 B2)
`IPR2014-00170 (Patent 6,311,136 B1)
`IPR2014-00178 (Patent 7,136,761 B2)
`IPR2014-00179 (Patent 7,124,646 B2)
`IPR2014-00390 (Patent 6,754,594 B2)
`IPR2014-00392 (Patent 8,000,906 B2)
`IPR2014-00393 (Patent 7,571,062 B2)
`
`
`I. DISCUSSION
`A conference call for the proceedings identified above was held on
`March 11, 2015, between respective counsel for the Petitioner and Patent
`Owner, and Judges Saindon, Zecher, and Meyer. The parties initiated the
`conference call to seek authorization to file a Joint Motion to Terminate in
`each of the proceedings identified above.
`During the conference call, the parties indicated that they have
`settled their dispute regarding the patents at issue. In light of the
`settlement reached, the parties requested to cancel the oral argument for
`Cases IPR2014-00390, IPR2014-00392, and IPR2014-00393 scheduled on
`Thursday, March 12, 2015.
`Generally, we expect that a proceeding will terminate after the filing
`of a settlement agreement. See Office Patent Trial Practice Guide, 77 Fed.
`Reg. 48,756, 48,768 (Aug. 14, 2012). The regulatory provision governing
`settlement indicates that any agreement between the parties made in
`connection with, or in contemplation of, the termination of a proceeding
`shall be in writing and filed with the Board. 37 C.F.R. § 42.74. Based on
`the facts before us, we authorize the parties to file a Joint Motion to
`Terminate in each of the proceedings identified above.
`According to 35 U.S.C. § 317(a), an inter partes review 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
`
`
`
`2
`
`
`
`
`
`IPR2014-00167 (Patent 7,505,854 B2)
`IPR2014-00170 (Patent 6,311,136 B1)
`IPR2014-00178 (Patent 7,136,761 B2)
`IPR2014-00179 (Patent 7,124,646 B2)
`IPR2014-00390 (Patent 6,754,594 B2)
`IPR2014-00392 (Patent 8,000,906 B2)
`IPR2014-00393 (Patent 7,571,062 B2)
`
`
`proceeding before the request for termination is filed. Nevertheless, even if
`no petitioner remains in an inter partes review, we have the discretion to
`proceed to a Final Decision.
`As movants, the parties have the burden to show entitlement to the
`relief requested. 37 C.F.R. § 42.20(c). Each Joint Motion to Terminate
`must include a sufficient explanation as to why termination is appropriate at
`such a late stage in the proceeding.
`The parties also are required to file a true copy of the parties’
`settlement agreement, in accordance with 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(b). A redacted version of the settlement agreement will not be
`accepted as a true copy of the settlement agreement.
`The parties may request that each settlement agreement be treated as
`business confidential information under 37 C.F.R. § 42.74(c). Such a
`request must be filed, as a separate paper, with the settlement agreement.
`The parties are directed to Frequent Asked Question G2 on the Board’s
`website at http://www.uspto.gov/patents-application-process/appealing-
`patent-decisions/trials/patent-review-processing-system-prps-0#heading-12
`for instructions on how to file their settlement agreement as business
`confidential information (e.g., uploading as “Parties and Board Only”).
`
`
`
`
`3
`
`
`
`IPR2014-00167 (Patent 7,505,854 B2)
`IPR2014-00170 (Patent 6,311,136 B1)
`IPR2014-00178 (Patent 7,136,761 B2)
`IPR2014-00179 (Patent 7,124,646 B2)
`IPR2014-00390 (Patent 6,754,594 B2)
`IPR2014-00392 (Patent 8,000,906 B2)
`IPR2014-00393 (Patent 7,571,062 B2)
`
`
`II. ORDER
`
`
`
`Accordingly, it is:
`ORDERED that the parties are authorized to file a Joint Motion to
`Terminate in each of the proceedings identified above no later than
`March 24, 2015;
`FURTHER ORDERED that the parties are required to file a true copy
`of the parties’ settlement agreement in connection with the termination of
`the proceeding, in accordance with 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(b);
`FURTHER ORDERED that the parties may file a separate paper
`requesting that each settlement agreement be treated as business confidential
`information as specified in 37 C.F.R. § 42.74(c);
`FURTHER ORDERED that any confidential settlement agreement
`must be filed, as an exhibit, electronically in the Patent Review Processing
`System in accordance with the instructions provided on the Board’s website
`(e.g., uploading as “Parties and Board Only”); and
`FURTHER ORDERED that the oral argument for Cases IPR2014-
`00390, IPR2014-00392, and IPR2014-00393 scheduled for Thursday,
`March 12, 2015, is cancelled.
`
`
`
`
`
`4
`
`
`
`
`
`
`
`IPR2014-00167 (Patent 7,505,854 B2)
`IPR2014-00170 (Patent 6,311,136 B1)
`IPR2014-00178 (Patent 7,136,761 B2)
`IPR2014-00179 (Patent 7,124,646 B2)
`IPR2014-00390 (Patent 6,754,594 B2)
`IPR2014-00392 (Patent 8,000,906 B2)
`IPR2014-00393 (Patent 7,571,062 B2)
`
`
`For PETITIONER:
`
`Andrew S. Baluch
`Jeffrey N. Costakos
`Angela Murch
`Michelle Moran
`Linda Hansen
`Kadie Jelenchick
`Foley & Lardner LLP
`wash-abaluch-ptab@foley.com
`jcostakos@foley.com
`amurch@foley.com
`mmoran@foley.com
`lhansen@foley.com
`kjelenchick@foley.com
`
`
`For PATENT OWNER:
`
`Jeffrey L. Johnson
`James M. Heintz
`DLA Piper LLP (US)
`Jeffrey.johnson@dlapiper.com
`Invensys_Micro_IPR@dlapiper.com
`
`
`
`
`
`5
`
`
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