`571-272-7822
`
`
` Paper No. 16
` Entered: June 29, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RICOH AMERICAS CORP.,
`Petitioner,
`
`v.
`
`ROUND ROCK RESEARCH LLC,
`Patent Owner.
`____________
`
`Cases IPR2016-00635 (Patent 6,147,405)
`IPR2016-00637 (Patent 6,455,935)
`IPR2016-00639 (Patent 6,828,683)
`IPR2016-00640 (Patent 6,358,801)
`IPR2016-00641 (Patent 5,986,347)1
`____________
`
`
`
`Before GRACE KARAFFA OBERMANN, SUSAN L. C. MITCHELL, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`ANKENBRAND, Administrative Patent Judge.
`
`
`ORDER
`Dismissing Petitions Pursuant to Settlement
`37 C.F.R. §§ 42.71(a), 42.74
`
`
`1 This Order addresses issues common to all five proceedings. Thus, we
`exercise our discretion to issue a single order to be entered in each
`proceeding.
`
`
`
`IPR2016-00635 (Patent 6,147,405)
`IPR2016-00639 (Patent 6,828,683)
`IPR2016-00641 (Patent 5,986,347)
`
`
`
`IPR2016-00637 (Patent 6,455,935)
`IPR2016-00640 (Patent 6,358,801)
`
`On June 28, 2016, pursuant to Board authorization, Petitioner and
`
`Patent Owner filed a joint motion to terminate each proceeding identified in
`
`the caption. Paper 11.2 Along with the motion, the parties filed a copy of a
`
`document they describe as their written settlement agreement (Id. at 4, 1; Ex.
`
`2001), as well as a separate joint request to treat the settlement agreement as
`
`business confidential information. Paper 10; see 37 C.F.R. § 42.74(c) (a
`
`party to a settlement may request that the settlement agreement be treated as
`
`business confidential and be kept separate from the patent file).
`
`
`
`The cases are in a preliminary stage, as the Board has not yet
`
`determined whether to institute trial. The parties represent in the joint
`
`motion that they have settled their dispute and have reached agreement to
`
`terminate these inter partes reviews, as well as related district court
`
`litigation. Paper 11, 2–4. Under these circumstances, we are persuaded that
`
`it is appropriate to dismiss the Petition in each proceeding. 37 C.F.R.
`
`§ 42.71(a). After reviewing the parties’ settlement agreement, we find that
`
`the agreement contains confidential business information regarding the
`
`terms of settlement and good cause exists to treat the settlement agreement
`
`as business confidential information pursuant to 35 U.S.C. § 317(b). This
`
`Order does not constitute a final written decision pursuant to 35 U.S.C.
`
`§ 318(a).
`
`
`
`
`2 The parties filed substantially similar papers and exhibits in each
`proceeding. Citations are to IPR2016-00635 as representative unless
`otherwise indicated.
`
`
`
`2
`
`
`
`IPR2016-00635 (Patent 6,147,405)
`IPR2016-00639 (Patent 6,828,683)
`IPR2016-00641 (Patent 5,986,347)
`
`It is therefore
`
`IPR2016-00637 (Patent 6,455,935)
`IPR2016-00640 (Patent 6,358,801)
`
`
`
`ORDERED that the joint motion is granted and the Petition is
`
`dismissed in each proceeding; and
`
`
`
`FURTHER ORDERED that the joint request that the settlement
`
`agreement be treated as business confidential information, to be kept
`
`separate from the patent file, is granted in each proceeding.
`
`
`
`3
`
`
`
`IPR2016-00637 (Patent 6,455,935)
`IPR2016-00640 (Patent 6,358,801)
`
`IPR2016-00635 (Patent 6,147,405)
`IPR2016-00639 (Patent 6,828,683)
`IPR2016-00641 (Patent 5,986,347)
`
`FOR PETITIONER:
`
`
`Theodore Mlynar
`Ted.mlynar@hoganlovells.com
`
`Ira Schaefer
`Ira.schaefer@hoganlovells.com
`
`Gary Serbin
`Gary.serbin@hoganlovells.com
`
`Helen Trac
`Helen.trac@hoganlovells.com
`
`Eric Lobenfeld
`Eric.lobenfeld@hoganlovells.com
`
`Takayuki Yasaku
`Takayuki.yasaku@yasaku-law.com
`
`FOR PATENT OWNER:
`
`Richard Botos
`rbotos@lernerdavid.com
`
`Neill Taylor
`ntaylor@roundrockresearch.com
`
`
`
`
`4
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
