`Entered: February 3, 2016
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`MICROSOFT CORPORATION, HTC CORPORATION,
`and HTC AMERICA, INC.,
`Petitioner,
`
`v.
`
`NONEND INVENTIONS, N.V.,
`Patent Owner.
`____________
`
`Case IPR2016-00224 (Patent 7,779,138)
` Case IPR2016-00225 (Patent 8,099,513)1
`
`
`
`Before GLENN J. PERRY, TREVOR M. JEFFERSON, and STACEY G. WHITE,
`Administrative Patent Judges.
`
`
`
`WHITE, Administrative Patent Judge.
`
`
`
`ORDER
`Motion to Terminate
`37 C.F.R. § 42.72
`
`
`
`1 This Order addresses scheduling that is identical in the listed cases. We exercise
`our discretion to issue a single paper to be filed in each case. The parties are not
`authorized to use this style heading for any subsequent papers.
`
`
`
`IPR2016-00224, -225
`Patents 7,779,138; 8,099,513
`
`On January 26, 2016, the parties filed joint motions to terminate as to
`
`Microsoft Corporation in each of the instant proceedings under 35 U.S.C.
`§ 317(a).2 Along with the motions, the parties filed copies of a document they
`described as the written settlement agreement,3 as well as separate joint requests to
`treat the settlement agreement as business confidential information under the
`provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).4 As the motions and
`exhibits in both proceedings are substantially similar, we will refer herein to the
`papers filed in IPR2016-00224 for convenience.
`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 parties stated in their
`motion that “[t]ermination with respect to Microsoft is appropriate in the instant
`proceeding because the dispute between Microsoft and Nonend has been resolved.”
`Paper 7, 1. The parties note that the Petition was filed November 20, 2015, and
`that the Preliminary Response would not be due until early March. Id. at 2.
`Furthermore, a trial has not been instituted in this proceeding. Id.
`The parties are reminded that the Board is not a party to the settlement, and
`may independently identify any question of patentability. 37 C.F.R § 42.74(a).
`Generally, however, 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. 48,756, 48,768 (Aug. 14, 2012). These proceedings are still in the
`
`
`2 IPR2016-00224, Paper 7; IPR2016-00225, Paper 7.
`3 IPR2016-00224, Ex. 1066; IPR2016-00231, Ex. 1066.
`4 IPR2014-00224, Paper 8; IPR2014-00225, Paper 8.
`
` 2
`
`
`
`
`
`
`
`IPR2016-00224, -225
`Patents 7,779,138; 8,099,513
`
`preliminary stages, as the Board has not instituted a trial. The Board is persuaded
`that, under these circumstances, it is appropriate to terminate these proceedings as
`to Microsoft without rendering a final written decision. 37 C.F.R. § 42.72.
`Microsoft is one of the petitioning parties and these proceedings shall continue as
`to HTC Corporation and HTC America, Inc.
`
`Accordingly, it is:
`ORDERED that the joint motions to terminate these proceedings as to
`Microsoft Corporation are GRANTED;
`FURTHER ORDERED that the parties’ joint requests that the settlement
`agreements (IPR2016-00224, Ex. 1066 and IPR2016-00231, Ex. 1066) be treated
`as business confidential information, kept separate from the file of the involved
`patents, and made available only to Federal Government agencies on written
`request, or to any person on a showing of good cause, under the provisions of 35
`U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), are GRANTED.
`
`
`
`
`
` 3
`
`
`
`
`
`
`
`IPR2016-00224, -225
`Patents 7,779,138; 8,099,513
`
`
`PETITIONER:
`
`Bing Ai
`Kevin Patariu
`Christopher Kelley
`Vinay Sathe
`Phillip Morin
`Perkins Coie LLP
`Ai-ptab@perkinscoie.com
`Kpatariu@perkinscoie.com
`Ckelley@perkinscoie.com
`Vsathe@perkinscoie.com
`Pmorin@perkinscoie.com
`
`PATENT OWNER:
`
`Matthew Antonelli
`ANTONELLI, HARRINGTON & THOMPSON LLP
`matt@ahtlawfirm.com
`
`
` 4
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