`Entered: March 25, 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.
`
`
`
`PERRY, Administrative Patent Judge.
`
`
`
`ORDER
`Motion to Terminate
`37 C.F.R. §§ 42.72 and 42.74
`
`
`1 This Order addresses both captioned 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. For convenience we refer to paper numbers in
`IPR2016-00224.
`
`
`
`IPR2016-00224, -225
`Patents 7,779,138; 8,099,513
`
`
`
`On February 23, 2016, the remaining parties2 filed joint motions to terminate
`
`these proceedings under 35 U.S.C. § 317 and 37 C.F.R. § 42.74. Paper 10. 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 (Paper 11) 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).
`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 state in their
`motions that “[t]ermination is appropriate in the instant proceeding because the
`dispute between HTC and Nonend has been resolved.” Paper 10, 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
`preliminary stages, as the Board has not instituted a trial. The Board is persuaded
`
`
`2 The involvement of Microsoft Corporation previously was terminated. Paper 9.
`3 Exhibit 1067.
`
` 2
`
`
`
`
`
`
`
`IPR2016-00224, -225
`Patents 7,779,138; 8,099,513
`
`that, under these circumstances, it is appropriate to terminate these proceedings
`without rendering a final written decision. 37 C.F.R. § 42.72.
`Accordingly, it is:
`ORDERED that the joint motions to terminate these proceedings are
`GRANTED;
`FURTHER ORDERED that the parties’ joint requests (Paper 11) that the
`settlement agreements 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.
`
`
`
`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
`
` 3
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