`Trials@uspto.gov
`Entered: November 9, 2016
`
`571–272–7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`AMX, LLC,
`Petitioner,
`
`v.
`
`CHRIMAR SYSTEMS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2016-00573
`Patent 9,019,838 B2
`_______________
`
`
`
`Before KARL D. EASTHOM, GREGG I. ANDERSON, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`DECISION
`Termination of the Proceeding
`35 U.S.C. § 317(a)
`
`
`
`
`
`
`
`
`IPR2016-00573
`Patent 9,019,838 B2
`
`
`INTRODUCTION
`I.
`AMX, LLC (“AMX”) and Chrimar Systems, Inc. (“Chrimar”) filed a
`Joint Motion to Terminate the Proceeding. Paper 23 (“Motion” or “Mot.”).
`The parties also filed a true copy of a Confidential Settlement Agreement
`(“Agreement”). Ex. 1041. The parties identified the Agreement as business
`confidential information and requested that the Agreement be kept separate
`from the patent file. Paper 24, 1. For the reasons discussed below, the
`Motion is granted.
`
`II. ANALYSIS
`No oral hearing has occurred in this proceeding, and we have not
`made a decision on the merits. The parties indicate that, pursuant to the
`Agreement, they have settled their dispute regarding U.S. Patent No.
`9,019,838 B2. Mot. 1–2. The parties represent that “there is no other
`agreement, oral or written, between the parties made in connection with, or
`in contemplation of, the termination of this proceeding.” Id. at 2.
`We note that Aerohive Networks, Inc. (“Aerohive”) filed a petition for
`inter partes review in IPR2016-01758 challenging U.S. Patent No.
`9,019,838 B2 (“Petition”), and filed a motion with the Petition requesting
`that IPR2016-01758 be joined with this proceeding (“Motion for Joinder”).
`Aerohive Networks, Inc., v. Chrimar Systems, Inc., Case IPR2016-01758,
`slip op. at 2 (PTAB Nov. 7, 2016) (Paper 7). We recognize that, if we
`terminate this proceeding, the Motion for Joinder may be moot and the
`Petition may be barred under 35 U.S.C. § 315(b). Aerohive, Case IPR2016-
`01758, slip op. at 3 (Paper 7). Aerohive, however, could have avoided the
`§ 315(b) bar by filing the Petition within one year after Chrimar served its
`complaint alleging infringement of the challenged patent. Aerohive, Case
`
`2
`
`
`
`IPR2016-00573
`Patent 9,019,838 B2
`
`IPR2016-01758, slip op. at 4 (Paper 7). Further, “[t]here are strong public
`policy reasons to favor settlement between the parties to a proceeding,” and,
`thus, “[t]he Board expects that a proceeding will terminate after the filing of
`a settlement agreement, unless the Board has already decided the merits of
`the proceeding.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`48,768 (Aug. 14, 2012).
`Under these circumstances, we determine that it is appropriate to
`terminate this proceeding. See 35 U.S.C. § 317(a). We also determine that
`it is appropriate to treat the Agreement as business confidential information
`to be kept separate from the patent file. See 35 U.S.C. § 317(b).
`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Joint Motion to Terminate the Proceeding is
`granted;
`FURTHER ORDERED that this proceeding is terminated as to all
`parties; and
`FURTHER ORDERED that the request to treat the Confidential
`Settlement Agreement (Ex. 1041) as business confidential information to be
`kept separate from the patent file is granted.
`
`
`
`3
`
`
`
`IPR2016-00573
`Patent 9,019,838 B2
`
`PETITIONER:
`Brent A. Hawkins
`Amol A. Parikh
`MCDERMOTT, WILL & EMERY LLP
`bhawkins@mwe.com
`amparikh@mwe.com
`
`PATENT OWNER:
`Justin S. Cohen
`THOMPSON & KNIGHT LLP
`justin.cohen@tklaw.com
`
`Richard W. Hoffman
`REISING ETHINGTON PC
`hoffmann@reising.com
`
`4
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