`Tel: 571-272-7822
`
`
`
` Entered: February 26, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TRW AUTOMOTIVE US LLC,
`Petitioner,
`
`v.
`
`MAGNA ELECTRONICS INC.,
`Patent Owner.
`_______________
`
`Cases
`IPR2015-01429
`IPR2015-01430
`IPR2015-014311
`Patent 8,692,659 B2
`_______________
`
`
`
`ORDER
`Termination of the Proceeding
`37 U.S.C. § 317 and 37 C.F.R. § 42.72
`
`
`
`
`1 We use this caption to indicate that this Decision applies to, and is entered
`in, each case. The parties are not authorized to use this caption.
`
`Before PHILLIP J. KAUFFMAN, BARRY L. GROSSMAN, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`KAUFFMAN, Administrative Patent Judge.
`
`
`
`
`
`IPR2015-01429
`IPR2015-01430
`IPR2015-01431
`Patent 8,692,659 B2
`
`
`Pursuant to authorization by the Board, TRW Automotive U.S. LLC
`(“Petitioner”) and Magna Electronics, Inc. (“Patent Owner”) filed a Joint Motion to
`Terminate, (Paper 9 (“Joint Motion”)), jointly requesting termination of this inter
`partes review proceeding and that we treat as “business confidential” the submitted
`settlement agreement (Ex. 1022 (“Settlement Agreement”)).2
`Under 35 U.S.C. § 317(a), an inter partes review proceeding shall be
`terminated with respect to any petitioner upon the joint request of the petitioner
`and the patent owner, unless the Patent and Trademark Office has decided the
`merits of the proceeding before the request for termination is filed. The Board has
`not decided the merits of this case. Thus, this proceeding is eligible for
`termination. Furthermore, 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).” Petitioner is the sole petitioner in this
`review. The Board has discretion to terminate this review with respect to Patent
`Owner.
`Under 35 U.S.C. § 317(b), any agreement or understanding between the
`Patent Owner and a Petitioner, including any collateral agreements referred to in
`such agreement or understanding, made in connection with, or in contemplation of,
`the termination of the proceeding shall be in writing, and a true copy of such
`agreement or understanding shall be filed in the Office. Patent Owner and
`Petitioner state in the Joint Motion that the parties have agreed to settle their
`dispute and have reached a written agreement to terminate this proceeding. Joint
`
`
`2 Unless otherwise stated, we reference the papers and exhibits of IPR2015-01429.
`The other proceedings contain similar fillings.
`2
`
`
`
`
`
`IPR2015-01429
`IPR2015-01430
`IPR2015-01431
`Patent 8,692,659 B2
`
`Motion 2. In support of the Joint Motion, the parties submitted Exhibit 1022 as
`evidence of their agreement. The parties also represent that Exhibit 1022 is a true
`and correct copy of the agreement and is filed in accordance with 35 U.S.C.
`§ 317(b) and 37 C.F.R. § 42.74(b), and thus represent that there are no collateral
`agreements or understandings in connection with, or in contemplation of, the
`termination of this proceeding. Id.
`Upon consideration of the facts in the case before us, we grant the Joint
`Motion and terminate this proceeding as to both Petitioner and Patent Owner
`without rendering a final written decision. 37 C.F.R. § 42.72. We also grant the
`Joint Request to maintain Exhibit 1023 as business confidential in accordance with
`37 C.F.R. § 42.74(c).
`
`
`ORDER
`
`Accordingly, it is:
`ORDERED that the Joint Motion to Terminate this proceeding is granted
`and, accordingly, this proceeding is hereby terminated; and
`FURTHER ORDERED that the parties’ Joint Request that the agreement
`(Ex. 1022) submitted in support of the Joint Motion be treated as business
`confidential information, to be kept separate from the file of U.S. Patent No.
`8,531,278 B2, and made available only under the provisions of 35 U.S.C. § 317(b)
`and 37 C.F.R. § 42.74(c), is granted.
`
`3
`
`
`
`
`
`
`
`
`
`IPR2015-01429
`IPR2015-01430
`IPR2015-01431
`Patent 8,692,659 B2
`
`
`PETITIONER:
`
`Timothy K. Sendek
`Allan Sternstein
`A. Justin Poplin
`Dan Cleveland Jr.
`LATHROP & GAGE LLP
`TSendek@lathropgage.com
`patent@lathropgage.com
`JPoplin@lathropgage.com
`dcleveland@lathropgage.com
`
`PATENT OWNER:
`
`David K.S. Cornwell
`Mark W. Rygiel
`STERNE, KESSLER, GOLDSTEIN & FOX PLLC
`davidc-PTAB@skgf.com
`mrygiel-PTAB@skgf.com
`
`Timothy A. Flory
`Terence J. Linn
`GARDNER, LINN, BURKHART & FLORY, LLP
`Flory@glbf.com
`linn@glbf.com
`
`
`
`4
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
