`571-272-7822
`
`
`
`
`
`Paper 45
`Entered: March 6, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`IRON DOME LLC,
`Petitioner,
`
`v.
`
`E-WATCH, INC.,
`Patent Owner.
`
`
`
`Case IPR2014-00439
`Patent 7,365,871
`
`
`
`Before JAMESON LEE, GREGG. I. ANDERSON, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`
`DECISION
`
`Joint Motion to Terminate
`37 C.F.R. § 42.72
`
`
`
`
`
`IPR2014-00439
`Patent 7,365,871
`
`
`On February 24, 2015, Iron Dome LLC (“Petitioner”) and e-Watch,
`
`Inc. (“Patent Owner”) filed a joint motion to terminate the trial proceedings
`
`under 35 U.S.C. § 317(a). Paper 41. Along with the motion, the parties
`
`filed a Joint Request to File True Copy of Agreement Resolving Dispute as
`
`Business Confidential Information Pursuant to 35 U.S.C. § 317 (Paper 40), a
`
`copy of a document they described as the written settlement agreement
`
`(Exhibit 2041), and a separate exhibit containing Patent Owner’s
`
`Explanation re Termination (Exhibit 2042).
`
`On February 26, 2015, we expunged the joint motion to terminate and
`
`authorized the parties to re-file a revised joint motion to terminate that
`
`incorporates the arguments from Exhibit 2042. Paper 42.
`
`On February 26, 2015, the parties filed a revised joint motion to
`
`terminate the trial proceedings under 35 U.S.C. § 317(a). Paper 43 (“Mot.”).
`
`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.” In their
`
`joint motion, the parties request termination of the instant proceeding
`
`because they have settled their dispute and have reached agreement to
`
`terminate this inter partes review, and because the Office has not yet
`
`decided the merits of the proceeding. Mot. 2–3. Specifically, the parties
`
`state that, “[b]ecause the parties are jointly requesting termination and the
`
`Office has not yet ‘decided the merits of the proceeding before the request
`
`for termination is filed,’ the USPTO is required to terminate the inter partes
`
`review with respect to Petitioner.” Id. at 3.
`
`2
`
`
`
`IPR2014-00439
`Patent 7,365,871
`
`
`The parties also indicate that nine litigations involving the ’871 patent
`
`are pending, one is stayed, and one is terminated. Id. at 4–6. The parties
`
`note, however, that “none of these Defendants have sought to join this IPR
`
`proceeding. In addition, none of these Defendants have cited the same
`
`ground of rejection as cited in this IPR proceeding in their IPR petitions
`
`related to the '871 patent.” Id. at 4.
`
`The parties are reminded that the Board is not a party to the settlement
`
`and that, even if the parties agree to settle any issue in a proceeding, the
`
`Board may independently determine any question of patentability. 37 C.F.R
`
`§ 42.74(a). Generally, however, the Board expects that a proceeding will
`
`terminate after the filing of a settlement agreement. See, e.g., Office Patent
`
`Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). We
`
`have not yet decided the merits of this proceeding. For example, the oral
`
`argument has not been held. The Board is persuaded that, under these
`
`circumstances, it is appropriate to terminate this proceeding as to both
`
`Petitioner and Patent Owner without rendering a final written decision. 37
`
`C.F.R. § 42.72.
`
`Accordingly, it is:
`
`ORDER
`
`ORDERED that the revised joint motion to terminate this proceeding
`
`is GRANTED and this proceeding is hereby terminated as to both Petitioner
`
`and Patent Owner; and
`
`FURTHER ORDERED that the parties’ joint request that the
`
`settlement agreement (Exhibit 2041) be treated as business confidential
`
`information, kept separate from the file of the involved patent, and made
`
`available only to Federal Government agencies on written request, or to any
`
`3
`
`
`
`IPR2014-00439
`Patent 7,365,871
`
`person on a showing of good cause, under the provisions of 35 U.S.C.
`
`§ 317(b) and 37 C.F.R. § 42.74(c), is GRANTED; and
`
`FURTHER ORDERED that the settlement agreement (Exhibit 2041)
`
`is changed to “Board Only” in PRPS.
`
`
`
`4
`
`
`
`5
`
`IPR2014-00439
`Patent 7,365,871
`
`For PETITIONER:
`
`Steven Yu
`ROZMED LLC
`syu@patent-intercept.com
`
`For PATENT OWNER:
`
`Robert C. Curfiss
`bob@curfiss.com
`
`and
`
`David O. Simmons
`IVC Patent Agency
`dsimmons1@sbcglobal.net
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