`571-272-7822
`
`
`
`
`
` Paper 11
`
`Entered: December 5, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GARMIN INTERNATIONAL, INC.,
`Petitioner,
`
`v.
`
`BLACKBIRD TECH, LLC d/b/a BLACKBIRD TECHNOLOGIES,
`Patent Owner.
`____________
`
`Case IPR2017-01058
`Patent 6,434,212
`____________
`
`
`
`Before DEBRA K. STEPHENS, THOMAS L. GIANNETTI, and
`CHRISTA P. ZADO, Administrative Patent Judges.
`
`STEPHENS, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Joint Motion to Terminate
`37 C.F.R. §§ 42.5, 42.72, 42.74(c)
`
`
`
`
`
`IPR2017-01058
`Patent 6,434,212
`
`
`On November 10, 2017, with Board authorization, the parties filed a
`joint motion to terminate the proceeding (Paper 9), along with what they
`indicate is their written settlement agreement (Ex. 1032). According to
`counsel, the parties have settled their disputes, and have reached agreement
`to terminate this inter partes review (“IPR”), which challenged the
`patentability of U.S. Patent No. 6,434,212 (“the ’212 patent”) (see Paper 1,
`1).
`
`The parties further request confidential treatment of the settlement
`agreement, pursuant to 37 C.F.R. § 42.74(c) (Paper 9).1 The joint request to
`treat the settlement agreement as business confidential information includes
`a request that the settlement agreement be kept separate from file of the ’212
`patent (Paper 10; see also 37 C.F.R. § 42.74(c) (“A party to a settlement
`may request that the settlement be treated as business confidential
`information and be kept separate from the files of an involved patent or
`application.”)).
`The parties jointly request the proceeding be terminated because
`Patent Owner and Petitioner have reached an agreement “fully resolving the
`dispute involving the patent at issue” in the Inter Partes Review and in the
`litigation between Patent Owner and Petitioner (Paper 9, 2). The parties
`further state Patent Owner has not yet filed its Patent Owner Response and
`the Board has not issued a final written decision on the merits (id. at 3).
`Based on the facts of this case, we agree it is appropriate to terminate
`the proceeding because doing so will preserve the Board’s and the parties’
`
`1 The parties state the ’212 patent has been asserted in many different
`pending district court litigations and in several Inter Partes Review petitions
`which have not yet reached an institution decision (Paper 9, 3).
`
`
`
`
`2
`
`
`
`IPR2017-01058
`Patent 6,434,212
`
`resources while also furthering the Patent Office’s policy of “secur[ing] the
`just, speedy, and inexpensive resolution.” 37 CFR § 42.1(b).
`Accordingly, the joint motion to terminate the above-identified
`proceeding and the joint request to treat the settlement agreement as business
`confidential information are granted. As requested by the parties, the
`settlement agreement will be treated as business confidential information
`and kept separate from the patent file. 37 C.F.R. § 42.74(c). This paper does
`not constitute a final written decision pursuant to 35 U.S.C. § 318(a).
`Therefore, it is
`ORDERED that the joint motion to terminate IPR2017-01058 is
`granted;
`FURTHER ORDERED that the proceeding in IPR2017-01058 is
`terminated pursuant to 37 C.F.R. §§ 42.5, 42.72, 42.74(c); and
`FURTHER ORDERED that the parties’ joint request that the
`settlement agreement (Ex. 1032) be treated as business confidential
`information, be kept separate from the file of the involved patent, and made
`available only to Federal Government agencies on written request, or to any
`person on a showing of good cause, under 37 C.F.R. § 42.74(c), is granted.
`
`
`PETITIONER:
`Jason Mudd
`jason.mudd@eriseip.com
`
`Adam Seitz
`adam.seitz@eriseip.com
`
`Paul Hart
`paul.hart@eriseip.com
`
`
`
`
`
`
`3
`
`
`
`IPR2017-01058
`Patent 6,434,212
`
`PATENT OWNER:
`Walter Davis
`wdavis@dbjg.com
`
`Aldo Noto
`anoto@dbjg.com
`
`Wayne Helge
`whelge@dbjg.com
`
`
`
`
`
`
`
`
`
`4
`
`
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