`571-272-7822
`
`Paper 14
`Entered: March 7, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NANYA TECHNOLOGY CORP.,
`Petitioner,
`
`v.
`
`NORTH STAR INNOVATIONS INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00965 (Patent 6,372,638 B1)
`Case IPR2016-01022 (Patent 6,492,686 B1)1
`
`____________
`
`Before J. JOHN LEE, CHARLES J. BOUDREAU, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`WORMMEESTER, Administrative Patent Judge.
`
`
`
`
`
`JUDGMENT
`Termination of Proceedings
`37 C.F.R. § 42.72
`
`
`
`
`
`
`
`1 This Judgment addresses issues that are the same in all identified cases.
`We exercise our discretion to issue one Judgment to be filed in each case.
`The parties are not authorized to use this style heading in subsequent papers.
`
`
`
`Case IPR2016-00965 (Patent 6,372,638 B1)
`Case IPR2016-01022 (Patent 6,492,686 B1)
`
`
`On March 1, 2017, the parties filed joint motions to terminate the
`instant proceedings pursuant to a Settlement and Patent License Agreement
`(“Settlement Agreement”). Paper 12; Ex. 2001.2 The parties also filed a
`copy of their Settlement Agreement (Ex. 2001), made in connection with the
`termination of the instant proceedings, in accordance with 35 U.S.C.
`§ 317(b) and 37 C.F.R. § 42.74(b). Paper 12, 3. In their joint motions, the
`parties request that the Settlement Agreement be treated as business
`confidential information and be kept separate from the files of the involved
`patents. Id.
`The instant proceedings are in their early stages. The Board instituted
`trial in each case on November 9, 2016. In an e-mail to the Board on
`March 6, 2017, the parties represented that each copy of the Settlement
`Agreement that they filed in the cases is a “true copy” of the Settlement
`Agreement and that “[t]here are no other agreements, oral or written,
`between the parties made in connection with, or in contemplation of, the
`termination of the proceedings.” The parties also represent that they “have
`dismissed all actions as between them” regarding the above-identified
`patents. Paper 12, 3. Under these circumstances, we determine that it is
`appropriate to terminate the instant proceedings under 37 C.F.R. § 42.72,
`without rendering a final written decision.
`
`
`
`2 The parties filed similar papers in each of the instant proceedings. We
`refer to those filed in IPR2016-00965 for convenience. See Paper 12, 3
`(“Furthermore, concurrently with this Joint Motion, the parties are filing
`another Joint Motion to Terminate Proceedings for IPR2016-01022 of U.S.
`Patent 6,492,686 (“the ’686 Patent”), which bears identical language to the
`present Motion.”).
`
`2
`
`
`
`Case IPR2016-00965 (Patent 6,372,638 B1)
`Case IPR2016-01022 (Patent 6,492,686 B1)
`
`
`Accordingly, it is
`ORDERED that the joint motions to terminate the instant proceedings
`are granted;
`FURTHER ORDERED that the instant proceedings are hereby
`terminated;
`FURTHER ORDERED that the parties’ joint request that the
`Settlement Agreement filed in each of the instant proceedings be treated as
`business confidential information and be kept separate from the file of the
`involved patent is granted;
`FURTHER ORDERED that the Settlement Agreement filed in each of
`the instant proceedings be treated as business confidential information and
`be kept separate from the file of the involved patent, under 37 C.F.R.
`§ 42.74(c), and made available only under the provisions of 35 U.S.C.
`§ 317(b) and 37 C.F.R. § 42.74(c); and
`FURTHER ORDERED that a copy of this Judgment be filed in each
`of the instant cases.
`
`
`
`
`
`
`
`3
`
`
`
`Case IPR2016-00965 (Patent 6,372,638 B1)
`Case IPR2016-01022 (Patent 6,492,686 B1)
`
`PETITIONER:
`Steven S. Baik
`Stephen M. Everett
`SIDLEY AUSTIN LLP
`sbaik@sidley.com
`stephen.everett@sidley.com
`
`
`
`PATENT OWNER:
`Cameron H Tousi
`Andrew C. Aitken
`Raymond J. Ho
`IP LAW LEADERS PLLC
`chtousi@ipllfirm.com
`acaitken@ipllfirm.com
`rjho@ipllfirm.com
`
`4
`
`
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