` Entered: August 17, 2017
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`JOHNSON SAFETY, INC.,
`Petitioner,
`
`v.
`
`VOXX INTERNATIONAL CORPORATION,
`Patent Owner.
`_______________
`
`
`
`
`
`Case IPR2016-01070
`Patent 7,245,274 B2
`____________
`
`
`Before BRYAN F. MOORE, DANIEL N. FISHMAN, and
`JOHN F. HORVATH, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`ORDER
`Granting Joint Motion to Terminate After Institution Due to Settlement
`35 U.S.C. § 317 and 37 C.F.R. § 42.72
`
`
`
`IPR2016-01070
`Patent 7,245,274 B2
`
`
`The parties have filed a Joint Motion to Terminate Due to Settlement.
`See Paper 15. The Joint Motion states that the parties have settled their
`dispute with respect to the ’274 patent and that the district court litigations
`involving the ’274 patent have been dismissed. Id. at 1. Concurrently with
`the Joint Motion, the parties also filed Exhibit 1020, which the parties
`represent is a true and correct copy of the parties’ Memorandum of
`Understanding settling the dispute. Id. at 1–2.
`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. In this proceeding, trial was instituted on November 23, 2016. Paper
`9. Patent Owner has not yet filed its Response, and the Board has not
`decided the merits of this proceeding. We grant the Joint Motion to
`Terminate and terminate this proceeding as to both Petitioner and Patent
`Owner without rendering a final written decision. See 37 C.F.R. § 42.72.
`The Parties also jointly request, pursuant to 37 C.F.R. § 42.74(c), that
`the Memorandum of Understanding in Exhibit 1020 be treated as business
`confidential information and be kept separate from the files of the involved
`patent. See Paper 15. We grant that request as well.
`Accordingly, it is hereby:
`ORDERED that the Joint Motion to Terminate this proceeding is
`granted and this proceeding is hereby terminated; and
`FURTHER ORDERED that the parties’ request that Exhibit 1020 be
`treated as business confidential information and kept separate from the files
`of the involved patent is granted, and that Exhibit 1020 be kept separate
`
`
`
`IPR2016-01070
`Patent 7,245,274 B2
`
`from the files of the ’274 patent.
`
`
`
`
`
`
`3
`
`
`
`IPR2016-01070
`Patent 7,245,274 B2
`
`PETITIONER:
`
`Gregory Howison
`ipr@dalpat.com
`
`Keith Harden
`ipr@dalpat.com
`
`John Arnott
`ipr@dalpat.com
`
`PATENT OWNER:
`
`Dean McConnell
`dean@im-iplaw.com
`
`Frank Chau
`chau@chauiplaw.com
`
`Richard Ratchford
`rratchford@chauiplaw.com
`
`F. Chau & Associates, LLC
`130 Woodbury Road
`Woodbury, NY 11797
`
`
`
`
`4
`
`
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