`571-272-7822
`
` Paper 40
`
`
` Entered: February 12, 2018
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`IMMERSION CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-01603
`Patent 8,581,710 B2
`____________
`
`
`
`Before MICHAEL R. ZECHER, BRYAN F. MOORE, and MINN CHUNG,
`Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`JUDGMENT
`Termination of Trial
`37 C.F.R. §§ 42.72 and 42.73
`
`
`
`
`
`IPR2016-01603
`Patent 8,581,710 B2
`
`
`On February 8, 2018, pursuant to our authorization, Petitioner, Apple
`Inc. (“Apple”), and Patent Owner, Immersion Corporation (“Immersion”),
`filed a Joint Motion to Terminate this inter partes review. Paper 38
`(“Mot.”). With the Joint Motion, the parties filed a copy of their written
`settlement agreement covering various matters, including those involving the
`patent at issue in this proceeding. Ex. 2012. The parties concurrently filed a
`Joint Request to have the settlement agreement treated as confidential
`business information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`Paper 39.
`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.” In this
`proceeding, we have not yet reached a decision on the merits with respect to
`the patentability of any involved claim. Accordingly, we must terminate the
`review with respect to Apple, as Petitioner.
`Furthermore, “[i]f no petitioner remains in the inter partes review, the
`Office may terminate the review or proceed to a final written decision under
`section 318(a).” 35 U.S.C. § 317(a). We, therefore, have discretion to
`terminate this review with respect to Immersion.
`In their Joint Motion, the parties assert that the settlement agreement
`resolves all underlying disputes between the parties involving U.S. Patent
`8,581,710 B2 (Ex. 1001, “the ’710 patent”) at issue in this proceeding.
`Mot. 1. The parties also contend that termination of this proceeding will
`serve judicial economy by preserving the resources of the Board and the
`
`2
`
`
`
`IPR2016-01603
`Patent 8,581,710 B2
`
`parties and minimizing the financial and other costs associated with the
`various proceedings involving the ’710 patent. Id. at 4–5.
`At the outset, we note the extremely advanced nature of this inter
`partes review proceeding. The parties have completed all briefing, the
`Board has held an oral hearing, and the statutory deadline for rendering a
`Final Written Decision is approximately two weeks away. Nonetheless,
`under the particular circumstances of this case, we determine that
`termination with respect to Immersion is appropriate.
`On January 29, 2018, the parties contacted the Board by email
`correspondence to inform the Board that the parties have reached an
`agreement to resolve their disputes, including settlement of the matters in
`controversy in this proceeding and other proceedings, and that they expect to
`seek authorization to file joint motions to terminate in the coming weeks.
`Hence, although the Joint Motion to Terminate this inter partes review was
`not filed until February 8, 2018, the parties informed the Board regarding the
`anticipated settlement in approximately one month prior to the statutory
`deadline for rendering a Final Written Decision. We do not suggest that a
`joint motion to terminate filed within a month from the statutory deadline
`will always be granted. Under the particular circumstance of this case,
`however, we determine that it is appropriate to terminate this inter partes
`review as to both Apple and Immersion without rendering a Final Written
`Decision. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72.
`
`
`
`3
`
`
`
`IPR2016-01603
`Patent 8,581,710 B2
`
`
`Accordingly, it is
`ORDERED that the parties’ Joint Request (Paper 39) to have the
`settlement agreement (Ex. 2012) treated as confidential business
`information, kept separate from the file of the ’710 patent, 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), is granted;
`FURTHER ORDERED that the Joint Motion to Terminate this
`proceeding (Paper 38) is granted; and
`FURTHER ORDERED that this inter partes review is hereby
`terminated.
`
`
`
`
`
`
`
`
`4
`
`
`
`IPR2016-01603
`Patent 8,581,710 B2
`
`PETITIONER:
`
`James Heintz
`Brian Erickson
`Robert Williams
`DLA PIPER LLP (US)
`jim.heintz@dlapiper.com
`brian.erickson@dlapiper.com
`robert.williams@dlapiper.com
`
`PATENT OWNER:
`Michael R. Fleming
`Babak Redjaian
`Crawford Maclain Wells
`IRELL & MANELLA LLP
`mfleming@irell.com
`bredjaian@irell.com
`mwells@irell.com
`
`
`5
`
`
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