`Tel: 571-272-7822
`
`
`
`
`
`Paper 23
`Entered: February 10, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`PANASONIC CORPORATION and
`PANASONIC CORPORATION OF NORTH AMERICA,
`Petitioner,
`
`v.
`
`OPTICAL DEVICES, LLC,
`Patent Owner.
`_______________
`
`Case IPR2014-00303
`Patent RE40,927 E
`_______________
`
`
`
`Before ERICA A. FRANKLIN, GLENN J. PERRY, and JAMES B. ARPIN,
`Administrative Patent Judges.
`
`PERRY, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2014-00303
`Patent RE40,927 E
`
`
`A conference call was held on February 9, 2015, and attended by the
`
`above-identified panel members and respective counsel for the parties. The
`
`parties sought authorization to file a joint motion to terminate the proceeding
`
`on the basis that the parties have reached a settlement. They indicated that,
`
`thus far, the agreement is verbal and the parties intend to reduce the
`
`agreement to a signed writing by the week of February 16, 2015.
`
`Generally, the Board expects that a proceeding will terminate after the
`
`filing of a settlement agreement. See, e.g., Office Patent Trial Practice
`
`Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). The rule governing
`
`settlement indicates that any agreement between the parties made in
`
`connection with, or in contemplation of, the termination of a proceeding
`
`shall be in writing and filed with the Board. 37 C.F.R. § 42.74.
`
`During the conference call, we authorized the filing of a joint motion
`
`to terminate the proceeding and provided guidance as to the procedure for
`
`filing the parties’ settlement agreement and having the settlement agreement
`
`treated as business confidential information under 37 C.F.R. § 42.74(c). The
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`joint motion must (1) include a brief explanation as to why termination is
`
`appropriate; (2) identify all defendants in any district court litigation related
`
`to the patent at issue in these proceeding; and (3) identify the current status
`
`of each such related litigation with respect to each party to such litigation.
`
`See Paper 8, 1–2; Paper 18, 1–2. The joint motion to terminate must be
`
`accompanied by a true copy of the parties’ settlement agreement, as required
`
`by 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b). See Groupon, Inc. v
`
`Maxim Integrated Products, Inc., CBM2014-00090, slip op. 2-3 (PTAB
`
`Aug. 12, 2014) (Paper 10) (discussing documents that may comprise an
`
`agreement). A redacted version of the settlement agreement will not be
`
`2
`
`
`
`IPR2014-00303
`Patent RE40,927 E
`
`accepted as a true copy of the settlement agreement.
`
`With respect to having the settlement agreement treated as business
`
`confidential information under 37 C.F.R. § 42.74(c), the parties must file the
`
`confidential settlement agreement electronically in the Patent Review
`
`Processing System (PRPS) as an exhibit in accordance with the instructions
`
`provided on the Board’s website (uploading as “Parties and Board Only”).
`
`The parties are directed to FAQ G2 on the Board’s website at
`
`http://www.uspto.gov/ip/boards/bpai/prps.jsp for instructions on how to file
`
`their settlement agreement as confidential.
`
`
`
`ORDER
`
`Accordingly, it is hereby
`
`ORDERED that the parties are authorized to file a joint motion to
`
`terminate this proceeding on or before February 27, 2014;
`
`FURTHER ORDERED that the joint motion must be accompanied by
`
`a true copy, labeled as an exhibit, of the parties’ settlement agreement, as
`
`required by 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b);
`
`FURTHER ORDERED that, for the exhibit that is the settlement
`
`agreement filed in this proceeding, the parties may file a separate paper
`
`requesting that the settlement agreement be treated as business confidential
`
`information as specified in 37 C.F.R. § 42.74(c); and
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`FURTHER ORDERED that any confidential settlement agreement
`
`must be filed electronically in PRPS in accordance with the instructions
`
`provided on the Board’s website (uploading as “Parties and Board Only”).
`
`3
`
`
`
`
`
`IPR2014-00303
`Patent RE40,927 E
`
`
`
`
`FOR PETITIONER:
`
`
`Christopher D. Bright
`Amol A. Parikh
`MCDERMOTT WILL & EMERY LLP
`qjiami@mwe.com
`amparikh@mwe.com
`
`FOR PATENT OWNER:
`
`
`Thomas Engellenner
`Reza Mollaaghababa
`PEPPER HAMILTON LLP
`engellerrert@pepperlaw.com
`mollaaghababar@pepperlaw.com
`
`Theodosios Thomas
`OPTICAL DEVICES, LLC
`ted.thomas@sceneralabs.com
`
`
`4
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