UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`MICRO MOTION, INC.
`Petitioner
`
`v.
`
`INVENSYS SYSTEMS, INC.
`Patent Owner
`
`Patent No. 7,571,062
`Issue Date: August 4, 2009
`Title: DIGITAL FLOWMETER
`_______________
`
`Inter Partes Review No. IPR2014-00393
`____________________________________________________________
`
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.72
`
`and
`
`JOINT REQUEST THAT SETTLEMENT RELATED AGREEMENTS BE
`TREATED AS BUSINESS CONFIDENTIAL INFORMATION PURSUANT
`TO 35 U.S.C. § 317 and 37 C.F.R. § 42.74
`
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`MICRO MOTION, INC.
`Petitioner
`
`v.
`
`INVENSYS SYSTEMS, INC.
`Patent Owner
`
`Patent No. 7,571,062
`Issue Date: August 4, 2009
`Title: DIGITAL FLOWMETER
`_______________
`
`Inter Partes Review No. IPR2014-00393
`____________________________________________________________
`
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.72
`
`and
`
`JOINT REQUEST THAT SETTLEMENT RELATED AGREEMENTS BE
`TREATED AS BUSINESS CONFIDENTIAL INFORMATION PURSUANT
`TO 35 U.S.C. § 317 and 37 C.F.R. § 42.74
`
`
`
`IPR2014-00393
`Patent No. 7,571,062
`
`Pursuant to 35 U.S.C. §317 and 37 C.F.R. § 42.72, Patent Owner Invensys
`
`Systems, Inc. and Schneider Electric SA (“Patent Owner”) and Petitioner Micro
`
`Motion, Inc. and Emerson Electric Co. (“Petitioner”) (collectively, “the Parties”)
`
`jointly request termination of Inter Partes Review No. IPR2014-00393, involving
`
`claims 1, 29, 40, and 45 of U.S. Patent 7,571,062 (“’062 Patent”).
`
`The Parties have settled all of their disputes involving the ’062 Patent, as
`
`well as other patents owned by Patent Owner. More specifically, the Parties have
`
`agreed to jointly request termination of this proceeding, as well as IPR Nos.
`
`IPR2014-00167, -00170, -00178, -00179, -00390, and -00392 (“the co-pending
`
`IPRs”)1. The Parties also have agreed to settle and dismiss their related district
`
`court litigation (Invensys Systems, Inc. v. Emerson Electric Co. and Micro Motion
`
`Inc., USA, CA No. 6:12-cv-00799 (LED) (E.D. Tex.)).
`
`Pursuant to 37 C.F.R. § 42.74(b), the Parties’ settlement agreement and any
`
`collateral agreements made in contemplation of termination of the proceeding are
`
`in writing, and true and correct copies of such documents are being filed herewith
`
`as Exhibit 1080. The Parties hereby jointly request that the settlement related
`
`agreements be treated as business confidential information and be kept separate
`
`
`1 The Parties are submitting a Joint Motion to Terminate Proceeding in each of
`
`IPR2014-00167, -00170, -00178, -00179, -00390, and -00392.
`
`1
`
`
`
`IPR2014-00393
`Patent No. 7,571,062
`
`I.
`
`Background
`
`This proceeding (IPR2014-00393) involves claims 1, 29, 40, and 45 of the
`
`’062 Patent. The Patent Trial and Appeal Board (the “Board”) issued a Decision to
`
`Institute Trial on August 4, 2014. A final hearing in this proceeding, scheduled for
`
`March 12, 2015, was cancelled so that termination papers could be filed and
`
`considered. The Board has not decided this IPR on the merits.
`
`On March 10, 2015, the Parties agreed to settle all of their disputes involving
`
`the ’062 Patent and the patents involved in the co-pending IPRs. That same day,
`
`the Parties informed the Board of the settlement and requested a phone conference
`
`with the Board requesting authorization to file a joint motion to terminate the
`
`proceeding with respect to both the Patent Owner and the Petitioner. In a
`
`conference call with the Board on March 11, 2015, the Parties confirmed that
`
`settlement had been reached and agreements were in the process of being drafted
`
`and finalized.
`
`As more fully set forth in the Order for Conduct of the Proceedings, March
`
`11, 2015 (Paper 40)(“Order”), the Board authorized the filing of the requested joint
`
`motion to terminate this proceeding as to both parties.
`
`2
`
`
`
`IPR2014-00393
`Patent No. 7,571,062
`
`ARGUMENT
`
`II.
`
`Petitioner Must Be Removed From This Inter Parties Review
`
`The concurrently-submitted settlement agreement, filed along with this Joint
`
`Motion to Terminate, requires Petitioner to withdraw from this review. Pursuant to
`
`the agreement, Petitioner cannot and will not participate further in this review. The
`
`Parties therefore jointly request that the inter partes review be terminated at least
`
`as to Petitioner pursuant to 35 U.S.C. § 317(a).
`
`For this reason, Patent Owner submits that this inter partes review should be
`
`terminated in its entirety. The Board has discretion to terminate an inter partes
`
`review in its entirety if no petitioner remains in the proceeding. 35 U.S.C. § 317(a).
`
`Because Petitioner must withdraw and no longer participate, the Board should
`
`respectfully exercise its discretion to terminate this review.
`
`III.
`
`Termination as to Patent Owner Is Also Appropriate
`
`Pursuant to the Board’s instructions in the Order, following is a brief
`
`explanation as to why termination as to all Parties is appropriate.
`
`“Generally, [the Board] expects that a proceeding will terminate after the
`
`filing of a settlement agreement.” See Order at 2. Termination of this IPR is
`
`appropriate as the Board has not yet “decided the merits of the proceeding.” See,
`
`e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14,
`
`2012); Medline Industries, Inc. v. Paul Harmann AG, IPR2013-00173, Judgment
`
`3
`
`
`
`IPR2014-00393
`Patent No. 7,571,062
`
`Termination of the Proceeding (Paper 44) (appropriate to terminate fully briefed
`
`IPR as to all parties and without rendering final written decision where settlement
`
`of IPR and co-pending district court litigation, and no other proceedings concern
`
`involved patent); Atrium Medical Corp. v. Davol Inc., IPR2013-00186, Judgment
`
`(Paper 75) (appropriate to terminate IPR as to all parties where briefing is complete
`
`but no final decision on the merits has been rendered).
`
`Notably, no dispute remains between the Patent Owner and the Petitioner
`
`involving the ’062 Patent or the patents involved in the co-pending IPRs:
`
`i.
`
`the Parties have agreed to jointly request termination of this IPR and
`
`the co-pending IPRs;
`
`ii.
`
`the litigation between the parties involving the ’062 Patent and the
`
`patents involved in the co-pending IPRs is being dismissed as part of the
`
`settlement; and
`
`iii.
`
`no other litigations are pending involving other parties relating to the
`
`’062 patent and the patents involved in the co-pending IPRs.
`
`Termination of this case will conserve the time and resources of the Parties
`
`and the Board which can be put to other uses. Further, the Parties are unaware of
`
`any other matter before the Board, or a district court, that would be affected by the
`
`outcome of this proceeding or the related IPRs identified above.
`
`4
`
`
`
`IPR2014-00393
`Patent No. 7,571,062
`
`IV.
`
`Status of Related Litigation
`
`As noted above, the related district court action between Patent Owner and
`
`Petitioner has been settled and is being dismissed. There are no additional
`
`defendants in that related litigation. Further, there is no other litigation involving
`
`the ’062 Patent or the patents involved in the co-pending IPRs.
`
`V. Maintaining this Inter Partes Review Would Discourage Settlements of
`Concurrent Proceedings and Waste Judicial Resources
`
`Both Congress and federal courts have expressed a strong interest in
`
`encouraging settlement in litigation. See, e.g., Delta Air Lines, Inc. v. August, 450
`
`U.S. 346, 352 (1981) (“The purpose of [Fed. R. Civ. P.] 68 is to encourage the
`
`settlement of litigation.”); Bergh v. Dept. of Transp., 794 F.2d 1575, 1577 (Fed.
`
`Cir. 1986) (“The law favors settlement of cases.”). The Federal Circuit places a
`
`particularly strong emphasis on settlement. For example, it endorses the ability of
`
`parties to agree to never challenge validity as part of a settlement. See Flex-Foot,
`
`Inc. v. CRP, Inc., 238 F.3d 1362, 1370 (Fed. Cir. 2001); see also Cheyenne River
`
`Sioux Tribe v. U.S., 806 F.2d 1046, 1050 (Fed. Cir. 1986) (noting that the law
`
`favors settlement to reduce antagonism and hostility between parties).
`
`Maintaining this review after Patent Owner’s settlement with Petitioner
`
`would discourage future settlements by removing a primary motivation for
`
`settlement: eliminating litigation risk by resolving the parties’ disputes and ending
`
`5
`
`
`
`IPR2014-00393
`Patent No. 7,571,062
`
`the pending proceedings between them. For patent owners, litigation risks include
`
`the potential for their patents to be invalidated. If a patent owner knows that an
`
`inter partes review is likely to continue regardless of settlement, it can create a
`
`strong disincentive for the patent owner to settle.
`
`One of the primary reasons courts endorse settlement is preservation of
`
`judicial resources. Maintaining this review after Patent Owner and Petitioner have
`
`settled their disputes would waste, rather than conserve, judicial resources. This is
`
`of particular concern in this forum given the Board’s well-documented case load
`
`and the one year requirement of 35 U.S.C. § 316(a)(11).
`
`VI.
`
`Treat Settlement Agreements as Business Confidential Information
`
`Patent Owner and Petitioner hereby request that the Settlement Agreement
`
`and the License Agreement filed concurrently herewith as Exhibit 1080 be treated
`
`as business confidential information, be kept separate from the file of the involved
`
`’062 Patent, and be made available only to Federal Government agencies on
`
`written request, or to any person on a showing of good cause pursuant to 35 U.S.C.
`
`§ 317(b) and 37 C.F.R. § 42.74(c).
`
`VII. Conclusion
`
`For the foregoing reasons, Patent Owner and Petitioner jointly request that
`
`the Board terminate this Inter Partes Review proceeding as to all Parties, and treat
`
`the settlement related agreements filed herewith as business confidential
`
`6
`
`
`
`information and keep those agreements separate from the file of the ’062 Patent.
`
`IPR2014-00393
`Patent No. 7,571,062
`
`Dated: March 24, 2015
`
`Respectfully submitted,
`
`/Andrew S. Baluch /
`Andrew S. Baluch
`Registration No. 57,503
`Counsel for Petitioner
`
`/Jeffrey L. Johnson /
`Jeffrey L. Johnson
`Reg. No. 53,078
`Counsel for Patent Owner
`
`7
`
`
`
`IPR2014-00393
`Patent No. 7,571,062
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Joint Motion
`
`to Terminate Proceeding was served on March 24, 2015 by e-mailing a copy to
`
`counsel at the e-mail addresses listed below:
`
`Jeffrey L. Johnson
`Jeffrey.johnson@dlapiper.com
`
`James M. Heintz
`Invensys_Micro_IPR@dlapiper.com
`
`By: /Michelle A. Moran/
` Michelle A. Moran
`FOLEY & LARDNER LLP
`
`8
`
`
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