Paper 104
`Trials@uspto.gov
`Entered: July 15, 2019
`Tel: 571.272.7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`POLYGROUP LIMITED (MCO),
`Petitioner,
`v.
`WILLIS ELECTRIC CO., LTD.,
`Patent Owner.
`
`Cases IPR2016-01615, IPR2016-01616, and IPR2016-016171
`Patent 8,936,379 B1
`
`
`Before WILLIAM V. SAINDON, JEREMY M. PLENZLER, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`TERMINATION
`Due to Settlement After Institution of Trial
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`Polygroup Limited (MCO) (“Petitioner”) requested an inter partes
`review of claims 1–6, 8, 10–17, 28, 29, and 32 of U.S. Patent No. 8,936,379
`B1 (see, e.g., IPR2016-01615, Ex. 1001, “the ’379 patent”) in a series of
`three Petitions. IPR2016-01615, Paper 2; IPR2016-01616, Paper 2;
`IPR2016-01617, Paper 2. Upon consideration of the parties’ contentions
`
`1 This Decision applies to each of the listed cases and should be docketed in
`each case.
`
`
`Trials@uspto.gov
`Entered: July 15, 2019
`Tel: 571.272.7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`POLYGROUP LIMITED (MCO),
`Petitioner,
`v.
`WILLIS ELECTRIC CO., LTD.,
`Patent Owner.
`
`Cases IPR2016-01615, IPR2016-01616, and IPR2016-016171
`Patent 8,936,379 B1
`
`
`Before WILLIAM V. SAINDON, JEREMY M. PLENZLER, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`TERMINATION
`Due to Settlement After Institution of Trial
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`Polygroup Limited (MCO) (“Petitioner”) requested an inter partes
`review of claims 1–6, 8, 10–17, 28, 29, and 32 of U.S. Patent No. 8,936,379
`B1 (see, e.g., IPR2016-01615, Ex. 1001, “the ’379 patent”) in a series of
`three Petitions. IPR2016-01615, Paper 2; IPR2016-01616, Paper 2;
`IPR2016-01617, Paper 2. Upon consideration of the parties’ contentions
`
`1 This Decision applies to each of the listed cases and should be docketed in
`each case.
`
`
`
`IPR2016-01615, IPR2016-01616, and IPR2016-01617
`Patent 8,936,379 B1
`
`and supporting evidence, we instituted an inter partes review pursuant to 35
`U.S.C. § 314, as to the challenged claims of the ’379 Patent. IPR2016-
`01615, Paper 16; IPR2016-01616, Paper 15; IPR2016-01617, Paper 16.
`After institution, Willis Electric Company, Limited (“Patent Owner”)
`filed a Patent Owner Response in each of the instant proceedings. IPR2016-
`01615, Paper 32; IPR2016-01616, Paper 31; IPR2016-01617, Paper 33.
`Patent Owner also filed a Motion to Amend in each of the proceedings. See,
`e.g., IPR2016-01615, Paper 64. A hearing was held on December 15, 2017.
`See, e.g., IPR2016-01615, Paper 90. On February 26, 2018, we entered a
`Final Written Decision in each of the instant proceedings finding no
`challenged claims unpatentable and dismissing Patent Owner’s Motions to
`Amend. See, e.g., IPR2016-01615, Paper 94.
`The Federal Circuit issued a decision affirming-in-part, vacating-in-
`part, and remanding back to the Office for additional proceedings.
`Polygroup Limited MCO v. Willis Electric Co., Cases 2018-1748, 2018-
`1749, 2018-1750 (Fed. Cir. Jan. 28, 2019). In particular, the Federal Circuit
`vacated that Board’s determination that Petitioner failed to prove that claims
`1–6, 8, 10, 11, 13, 14, 16, 17, 28, and 29 of the ’379 Patent are not
`unpatentable. The Federal Circuit affirmed the Board’s determination that
`Petitioner failed to prove that claims 12, 15, and 32 of the ’379 Patent are
`unpatentable.
`With our authorization, on July 8, 2019, the Parties filed a Joint
`Motion to Terminate the Proceeding in IPR2016-01615. See IPR2016-
`01615, Paper 101. On July 12, 2019, the Parties filed a Joint Motion to
`Terminate the Proceeding in each of IPR2016-01616 and IPR2016-01617.
`See IPR2016-01616, Paper 103; IPR2016-01617, Paper 106. A copy of the
`
`2
`
`
`
`IPR2016-01615, IPR2016-01616, and IPR2016-01617
`Patent 8,936,379 B1
`
`Parties’ Settlement Agreement was filed along with the Joint Motion to
`Terminate the Proceeding in each of the instant proceedings. See e.g.,
`IPR2016-01615, Paper 102. The Parties also filed a Joint Request to File the
`Settlement Agreement as Business Confidential Information Pursuant to
`35 U.S.C. § 317(b) in each of the instant proceedings. See e.g., IPR2016-
`01615, Paper 103. The Parties represent that they have settled their disputes
`with respect to the challenged patent and memorialized their settlement in
`the written agreement. See e.g., IPR2016-01615, Paper 101, 1.
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
`this chapter shall be terminated with respect to any petitioner upon the joint
`request of the petitioner and patent owner, unless the Office has decided the
`merits of the proceeding before the request for termination is filed.” The
`requirement for terminating review with respect to Petitioner is met in each
`of the instant proceedings with respect to the claims pending before us, i.e.,
`claims 1–6, 8, 10, 11, 13, 14, 16, 17, 28, and 29 of the ’379 Patent because
`the Office has not decided the merits following the remand by the Federal
`Circuit.
`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).” On this record, Polygroup Limited
`(MCO) is the only petitioner in this proceeding. The Board has discretion to
`terminate the instant review with respect to Patent Owner.
`In the joint motion, the parties indicate that their settlement agreement
`provides for dismissal of related civil litigation. In particular, the parties
`represent that in an action in the United States District Court for Minnesota
`Civil Action No. 0:15-cv-03443-WMW-KMM, the parties have moved that
`
`3
`
`
`
`IPR2016-01615, IPR2016-01616, and IPR2016-01617
`Patent 8,936,379 B1
`
`claims 1–6, 8, 10, 11, 13, 14, 16, 17, 28, and 29 of the ‘379 Patent be
`dismissed with prejudice. See IPR2016-01615, Paper 101, 3. Additionally,
`the parties have not identified any other inter partes review proceedings
`involving challenges to claims of the ’379 Patent before the Office.
`We determine in these circumstances, it is appropriate to terminate
`review both as to Petitioner and Patent Owner in each of IPR2016-01615,
`IPR2016-01616, and IPR2016-01617 without rendering a final written
`decision subsequent to the remand. See 35 U.S.C. § 317; 37 C.F.R. § 42.74.
`Therefore, the Joint Motions to Terminate the Proceeding are granted. We
`also grant the requests of the parties to treat the Settlement Agreement as
`business confidential information. This paper does not constitute a final
`written decision pursuant to 35 U.S.C. § 318(a).
`ORDER
`For the foregoing reasons, it is:
`ORDERED that the Joint Request to File the Settlement Agreement as
`Business Confidential Information Pursuant to 35 U.S.C. § 317(b) in each of
`IPR2016-01615, IPR2016-01616, and IPR2016-01617 is granted;
`FURTHER ORDERED that the Settlement Agreement (IPR2016-
`01615, Paper 102; IPR2016-01616, Ex. 2093; IPR2016-01617, Ex. 2093)
`shall be treated as business confidential information and shall be kept
`separate from the patent file; and
`FURTHER ORDERED that the Joint Motion to Terminate the
`Proceeding in each of IPR2016-01615, IPR2016-01616, and IPR2016-01617
`is granted and the IPR2016-01615, IPR2016-01616, and IPR2016-01617
`inter partes reviews are terminated as to all parties.
`
`4
`
`
`
`IPR2016-01615, IPR2016-01616, and IPR2016-01617
`Patent 8,936,379 B1
`
`PETITIONER:
`Christopher Forstner
`chris.forstner@troutmansanders.com
`
`Jason Eisenberg
`jasone-ptab@sternekessler.com
`
`Ryan Schneider
`ryan.schneider@troutmansanders.com
`
`Alexis Simpson
`alexis.simpson@troutmansanders.com
`
`Robert Angle
`robert.angle@troutmansanders.com
`
`Dabney J. Carr, IV
`dabney.carr@troutmansanders.com
`
`
`PATENT OWNER:
`Larina Alton
`lalton@foxrothschild.com
`
`Lukas Toft
`ltoft@foxrothschild.com
`
`Doug Christensen
`christensen@cfpatlaw.com
`
`Jeff Schwartz
`jeschwartz@foxrothschild.com
`
`Ryan Miller
`rmiller@foxrothschild.com
`
`5
`
`
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