`571-272-7822
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`Paper 42
`Entered: July 19, 2016
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PRONG, INC.,
`Petitioner,
`
`v.
`
`YEOSHUA SORIAS,
`Patent Owner.
`____________
`
`Case IPR2015-01317
`Patent 8,712,486 B2
`____________
`
`
`Before SALLY C. MEDLEY, GLENN J. PERRY, and
`KIMBERLY McGRAW, Administrative Patent Judges.
`
`McGRAW, Administrative Patent Judge.
`
`JUDGMENT
`Termination of the Proceeding
`35 U.S.C. § 317; 37 C.F.R. §§ 42.72 and 42.74
`
`
`
`
`
`
`
`
`IPR2015-01317
`Patent 8,712,486 B2
`
`
`The parties have requested that this trial proceeding be terminated
`
`pursuant to settlement of the dispute regarding U.S. Patent No. 8,712,486.
`
`Paper 40. The parties concurrently filed a joint request that the Board treat
`
`the settlement agreement as business confidential information and keep it
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`separate from the file of the involved patent pursuant to 35 U.S.C. § 317(b)
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`and 37 C.F.R. § 42.74. Paper 41.
`
`The parties represent that a true copy of the parties’ settlement
`
`agreement was filed as Exhibit 1030. Paper 40, 2; Ex. 1031. The parties
`
`represent that the settlement agreement also resolves three other disputes: (1)
`
`a litigation between the parties in the Eastern District of New York
`
`involving the ’486 patent (1:14-cv-02897-WFK-SMG), (2) a litigation
`
`between the parties in the Southern District of New York involving U.S.
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`Patent No. 9,130,384 (“the ’384 patent)( 1:15-cv-09161-AJN), and (3) a
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`litigation between Patent Owner and GoWireless, Inc., in the Eastern District
`
`of New York involving the ’486 patent (Civil Action No. 1:16-cv-01898-
`
`WFKSMG). The parties represent that these three actions have each been
`
`dismissed upon the parties’ stipulations by orders of the respective U.S.
`
`District Courts and that there are no other litigations of disputes in any court
`
`or forum involving the Patent Owner and Petitioner. Paper 40, 5. The
`
`parties represent that there are no additional active litigations or proceedings
`
`that involve the ’486 Patent, or patents within the same family, at this time.
`
`Id., 6. We accept the parties’ representations.
`
`This inter partes review was instituted on December 9, 2015. Paper
`
`10. At this juncture of the proceeding, the Board does not have before it full
`
`briefing on the trial issues; the case has not been heard; and the Board has
`
`not entered a final decision. Under these circumstances, we determine that it
`
`2
`
`
`
`IPR2015-01317
`Patent 8,712,486 B2
`
`
`is appropriate to enter judgment and terminate without rendering a final
`
`written decision. 37 C.F.R. § 42.72.
`
`Accordingly, it is
`
`ORDERED that the joint motion to terminate the proceeding is
`
`granted;
`
`FURTHER ORDERED that the joint request that the settlement
`
`agreement (Ex. 1030) be treated as business confidential information and be
`
`kept separate from the file of the involved patents under the provisions of 35
`
`U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is granted.
`
`
`
`FOR PETITIONER:
`
`Caleb Pollack
`Zeev Pearl
`Daniel Melman
`Pearl Cohen Zedek Latzer Baratz LLP
`cpollack@pearlcohen.com
`zpearl@pearlcohen.com
`dmelman@pearlcohen.com
`
`
`
`FOR PATENT OWNER:
`Mitchell S. Feller
`Jason Wachter
`Gottlieb Rackman & Reisman, P.C.
`msfeller@grr.com
`jwachter@grr.com
`
`
`3
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