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`Paper No.
`Filed: June 5, 2018
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`BARCO, INC.,
`Petitioner,
`
`v.
`
`T-REX PROPERTY AB
`Patent Owner.
`__________________
`
`Case IPR2017-1909
`U.S. Patent No. RE39,470
`__________________
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`
`
`
`JOINT MOTION TO TERMINATE PROCEEDING
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`IPR2017-1911
`U.S. Patent RE39,470
`
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`Pursuant to 37 C.F.R. §§ 317(a) and 42.72, Petitioner Barco, Inc. and Patent
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`Owner T-Rex Property AB jointly move to terminate the inter partes review of
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`U.S. Patent No. RE39,470 (“the ’470 patent,” Ex. 1001), IPR2017-1909. The
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`Board authorized the Parties to file this motion by email correspondence on June 1,
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`2018, including the request to keep the settlement agreement confidential.
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`This proceeding is still in its preliminary stages. A Petition for inter partes
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`review was filed on August 3, 2017 (Paper No. 1). However, an Institution
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`Decision was not made until March 13, 2018, instituting review of challenged
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`claim 25 of the ‘470 patent. Patent Owner T-Rex has filed a Preliminary
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`Response, but has not yet filed a Response. In the interim, the Parties have settled
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`their dispute and respectfully submit that termination is proper here.
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`The ’470 Patent was the subject of a District Court action in Illinois, T-Rex
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`Property AB v. Barco, Inc., Civil Action No. 1:16-cv-6938 before Judge Blakey.
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`That action has now been dismissed without prejudice, and the parties have agreed
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`to move to dismiss it with prejudice under certain terms of the settlement between
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`the parties. Termination of the proceeding here would promote efficiency and
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`minimize unnecessary costs.
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`IPR2017-1911
`U.S. Patent RE39,470
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`The Parties have executed a Confidential Settlement Agreement to terminate
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`this proceeding, Case IPR2017-1909, and another related proceeding before this
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`Board involving U.S. Patent No. 7,382,334 (IPR2017-1911).
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`The Confidential Settlement Agreement is in writing and was fully executed
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`by the parties on May 23, 2018. In accordance with 35 U.S.C. § 317 and 37 C.F.R.
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`§ 42.74(b), a true and correct copy of the Settlement Agreement is being submitted
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`herewith as Confidential Exhibit 1008. Also submitted concurrently herewith is a
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`request by Petitioner and Patent Owner that the Confidential Settlement Agreement
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`be treated as business confidential information, be kept separate from the file of the
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`involved patents, and be made available only to the Federal Government agencies
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`on written request, or to any person on showing of good cause pursuant to 35
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`U.S.C. § 317 and 37 C.F.R. § 42.74(c).
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`Dated: June 5, 2018
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`Respectfully submitted,
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`NEUSTEL LAW OFFICES, LTD
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`
` s/ Edward Runyan
`Edward K. Runyan, Reg. No. 43,067
`Attorney for Petitioners
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`IPR2017-1911
`U.S. Patent RE39,470
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`CERTIFICATE OF SERVICE
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`Under 37 C.F.R. §§ 42.6(e), I certify that I served a copy of the foregoing
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`JOINT MOTION TO TERMINATE PROCEEDING via email on June 5, 2018
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`to Petitioners’ counsel of record at the following email addresses:
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`
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`Steven R. Daniels, Reg. No. 45,345
`FARNEY DANIELS PC
`800 S. Austin Avenue, Suite 200
`Georgetown, Texas 78626
`Phone: 512-582-2828
`E-mail: sdaniels@farneydaniels.com
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`PAIR Correspondence Address for U.S. Patent 7,382,334
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`
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`NEUSTEL LAW OFFICES, LTD
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`
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`
`
`/s/ Edward Runyan
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`Edward K. Runyan, Reg. No. 43,067
`Attorney for Petitioners
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`
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`Dated: June 5, 2018
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