`571–272–7822
`
`
`
`
`Paper 42
`Entered: February 9, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SONY CORPORATION,
`Petitioner,
`
`v.
`
`ONE-E-WAY, INC.,
`Patent Owner.
`_______________
`
`Case IPR2016-01638
`Patent 9,282,396 B2
`_______________
`
`
`Before DAVID C. MCKONE, ROBERT J. WEINSCHENK, and
`JOHN F. HORVATH, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Termination of the Proceeding
`37 C.F.R. §§ 42.72 and 42.74
`
`
`
`
`
`
`IPR2016-01638
`Patent 9,282,396 B2
`
`
`INTRODUCTION
`I.
`The parties filed a Joint Motion to Terminate Proceedings. Paper 39
`(“Motion” or “Mot.”). The parties also filed what they indicate is a true
`copy of a Confidential Settlement and License Agreement (Ex. 1014,
`“Agreement”). The parties identify the Agreement as business confidential
`information and request that the Agreement be kept separate from the patent
`file. Paper 40 (“Joint Request”). For the reasons discussed below, the
`Motion and Joint Request are granted.
`II. ANALYSIS
`We have not made a decision on the merits in this proceeding. The
`parties indicate that, pursuant to the Agreement, they have settled their
`dispute regarding U.S. Patent No. 9,282,396 B2. Mot. 1. The parties
`represent that “[o]ther than as indicated in the Agreement Exhibit 1014,
`there are no written or oral agreements or understandings, including any
`collateral agreements, between the parties, including but not limited to
`licenses, covenants not to sue, confidentiality agreements, or other
`agreements of any kind, that are made in connection with, or in
`contemplation of, the termination of this proceeding.” Id. Under these
`circumstances, we determine that it is appropriate to terminate this
`proceeding. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. We also determine
`that it is appropriate to treat the Agreement as business confidential
`information to be kept separate from the patent file. See 35 U.S.C. § 317(b);
`37 C.F.R. § 42.74(c).
`
`2
`
`
`
`IPR2016-01638
`Patent 9,282,396 B2
`
`
`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Joint Motion to Terminate Proceedings is
`granted;
`FURTHER ORDERED that this proceeding is terminated as to all
`parties; and
`FURTHER ORDERED that the Joint Request to treat the Confidential
`Settlement and License Agreement (Ex. 1014) as business confidential
`information to be kept separate from the patent file is granted.
`
`
`
`3
`
`
`
`IPR2016-01638
`Patent 9,282,396 B2
`
`PETITIONER:
`
`John Flock
`Paul T. Qualey
`ANDREWS KURTH KENYON LLP
`johnflock@andrewskurthkenyon.com
`paulqualey@andrewskurthkenyon.com
`
`
`PATENT OWNER:
`
`Daphne Burton
`BURTON IP LAW GROUP
`dburton@burtoniplaw.com
`
`Thomas D. Robbins
`tom@trpatents.com
`
`Douglas G. Muehlhauser
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2dgm@knobbe.com
`
`4
`
`