`571-272-7822
`
`
`
`
`Paper 20
`Entered: July 25, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SHENZHEN LIOWN ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`DISNEY ENTERPRISES, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01785
`Patent 8,721,118 B2
`____________
`
`
`Before J. JOHN LEE, WILLIAM M. FINK, and JESSICA C. KAISER,
`Administrative Patent Judges.
`
`FINK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Parties’ Joint Motion to Terminate Trial
`35 U.S.C. § 317 and 37 C.F.R. § 42.72
`
`
`
`
`
`
`
`
`IPR2016-01785
`Patent 8,721,118 B2
`
`
`
`
`I. DISCUSSION
`
`On July 21, 2017, the parties filed a Joint Motion to Terminate this
`
`proceeding (Paper 18), a true copy of the parties’ settlement agreement (Ex.
`
`1033), and a request to treat the settlement agreement as business
`
`confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c)
`
`(Paper 17).
`
`The trial is still in its preliminary stages. On April 3, 2017, we
`
`entered a decision instituting an inter partes review of claims 1, 3, 8, and 10
`
`of U.S. Patent No. 8,721,118 B2 (Ex. 1001, “the ’118 patent”). Paper 14.
`
`Although we have instituted a trial, Patent Owner has not filed a response to
`
`the Petition, nor has Petitioner filed a reply.
`
`In the Joint Motion to Terminate this proceeding, the parties indicate
`
`that they have settled their dispute regarding the ’118 patent. Paper 18, 1.
`
`According to the parties, terminating this proceeding at this early juncture
`
`would “preserve the Board’s resources and obviate the need for any more
`
`Board involvement in the present proceeding.” Id. at 3. We agree with the
`
`parties in this regard. Consequently, we determine that it is appropriate to
`
`terminate the trial without rendering any further decisions. See 37 C.F.R.
`
`§ 42.72.
`
`
`
`
`
`
`
`
`
`2
`
`
`
`IPR2016-01785
`Patent 8,721,118 B2
`
`
`
`
`II. ORDER
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that the parties’ request to treat the settlement agreement
`
`(Ex. 1033) as business confidential information under 35 U.S.C. § 317(b)
`
`and 37 C.F.R. § 42.74(c) is GRANTED; and
`
`FURTHER ORDERED that the Joint Motion to Terminate this
`
`proceeding is GRANTED, and this proceeding is hereby terminated.
`
`
`
`3
`
`
`
`
`
`IPR2016-01785
`Patent 8,721,118 B2
`
`PETITIONER:
`
`Thomas N. Millikan
`Bing Ai
`Joseph P. Reid
`Patrick J. McKeever
`Babak Tehranchi
`PERKINS COIE LLP
`tmillikan@perkinscoie.com
`ai-ptab@perkinscoie.com
`jreid@perkinscoie.com
`pmckeever@perkinscoie.com
`btehranchi@perkinscoie.com
`
`
`PATENT OWNER:
`
`Jon E. Wright
`David K.S. Cornwell
`Richard D. Coller III
`STERNE, KESSLER, GOLDSTEIN & FOX PLLC
`jwright-PTAB@skgf.com
`davide-PTAB@skgf.com
`rcoller-PTAB@skgf.com
`
`Ryan S. Dean
`John van Loben Sels
`FISH & TSANG, LLP
`rdean@fishiplaw.com
`jvanlobensels@fishiplaw.com
`
`
`
`
`
`
`
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`4
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`
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