`Patent 7,245,274
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________
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`JOHNSON SAFETY, INC.,
`Petitioner,
`
`v.
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`VOXX INTERNATIONAL CORPORATION,
`Patent Owner.
`
`_______________
`
`Case IPR2016-01070
`Patent 7,245,274
`_______________
`
`
`JOINT MOTION TO TERMINATE PROCEEDING
`DUE TO SETTLEMENT AND TO TREAT AGREEMENT AS BUSINESS
`CONFIDENTIAL INFORMATION
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`IPR2016-01070
`Patent 7,245,274
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`
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`EXHIBIT LIST
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`
`
`Ex. Description
`1018
`Order dated May 2, 2017 Dismissing Case 5:14-cv-02591-ODW-DTB
`1019
`Order dated May 3, 2017 Dismissing Case 2:17-cv-00358-ODW-DTB
`1020 Memorandum of Understanding
`
`
`
`
`i
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`IPR2016-01070
`Patent 7,245,274
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`
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`Pursuant to 35 U.S.C. § 317(a), Johnson Safety, Inc. (“Petitioner”) and Voxx
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`International Corporation (“Patent Owner”) (collectively, “Parties”) jointly request
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`termination of this proceeding, No. IPR2016-01070.
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`Petitioner and Patent Owner have settled their dispute with respect to the
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`patent challenged in this proceeding. Further, all of the matters related to the
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`challenged patent, excluding inter partes review proceedings, have been dismissed.
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`The parties to the district court litigations involving the challenged patent filed
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`Joint Motions to Dismiss with Prejudice, and the court in those proceedings issued
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`orders dated May 2, 2017 and May 3, 2017 dismissing the actions with prejudice
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`(see Exs. 1018 and 1019), ensuring that the actions are finally and completely
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`dismissed.
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`The Parties’ Memorandum of Understanding has been made in writing, and
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`a true and correct copy of the Memorandum of Understanding between the Parties
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`is filed concurrently herewith as Exhibit 1020 pursuant to 35 U.S.C.§ 317(b), 37
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`C.F.R. § 42.74(b), and pursuant to the Board’s email authorization to file a joint
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`motion to terminate these proceedings dated August 2, 2017. The Parties’
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`agreement to request termination of this proceeding appears in paragraph 9 of the
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`Memorandum of Understanding. The Parties jointly request that the Memorandum
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`of Understanding be treated as business confidential information and be kept
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`separate from the file of the patent at issue. In accordance therewith, pursuant to
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`1
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`IPR2016-01070
`Patent 7,245,274
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`the Board’s instructions, the Parties have filed the confidential Memorandum of
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`Understanding for the “Parties and Board Only.” The Parties further certify that
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`there are no collateral agreements or understandings made in connection with the
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`termination of the present inter partes review proceeding.
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`Termination of this proceeding is appropriate because the Board has not
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`rendered a written decision. The Board recognizes that “[t]here are strong public
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`policy reasons to favor settlement between the parties to a proceeding,” including
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`preserving the Board’s and Parties’ resources. See Office Patent Trial Practice
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`Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Termination of this
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`proceeding as a result of the Parties’ settlement here supports those public policy
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`concerns.
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`Therefore, Petitioner and Patent Owner respectfully request termination of
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`this proceeding.
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`Dated: August 3, 2017
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`
`/Gregory M. Howison, Reg. #30646/
`Gregory M. Howison, Reg. No. 30,646
`HOWISON & ARNOTT, L.L.P.
`5420 LBJ Freeway, Suite 660
`Dallas, Texas 75240
`Telephone: (972) 479-0462
`Facsimile: (972) 479-0464
`ipr@dalpat.com
`
`Lead Counsel For Johnson Safety, Inc.
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`2
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`Respectfully submitted,
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`/Dean E. McConnell, Reg. #44916/
`Dean E. McConnell, Reg. No. 44,916
`INDIANO & MCCONNELL
`9795 Crosspoint Blvd., Suite 185
`Indianapolis, IN 46256
`Telephone: (317) 912-1331
`
`dean@im-iplaw.com
`
`Lead Counsel for Voxx International
`Corporation
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`
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`CERTIFICATE OF SERVICE
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`Frank Chau (Backup Counsel)
`Reg. No. 34,136
`F. Chau & Associates LLC
`130 Woodbury Rd.
`Woodbury, NY 11797
`P: (516) 692-8888
`chau@chauiplaw.com
`mail@chauiplaw.com
`
`Attorney for Patent Owner, Voxx International
`Corporation
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`The undersigned hereby certifies that a copy of the foregoing Joint Motion
`to Terminate the Proceeding Due to Settlement and to Treat Agreement as
`Business Confidential Information, pursuant to 37 C.F.R. § 42.6(e), was served via
`electronic mail on August 3, 2017, in its entirety on the following:
`
`Dean E. McConnell (Lead Counsel)
`Reg. No. 44,916
`Indiano & McConnell LLP
`9795 Crosspoint Blvd., Suite 185
`Indianapolis, Indiana 46256
`P: (317) 912-1331
`dean@im-iplaw.com
`
`
`Attorney for Patent Owner, Voxx International
`Corporation
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`Richard D. Ratchford (Backup Counsel)
`Reg. No. 53,865
`F. Chau & Associates LLC
`130 Woodbury Rd.
`Woodbury, NY 11797
`P: (516) 692-8888
`rratchford@chauiplaw.com
`
`Attorney for Patent Owner, Voxx International
`Corporation
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`/Gregory M. Howison, Reg. #30646/
`Gregory M. Howison
`Registration No. 30,646
`Lead Counsel for Petitioner
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`By:
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