`571-272-7822
`
`
`
`
`
`
`Paper 42
`Entered: March 22, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`IMMERSION CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-01907
`Patent 7,808,488 B2
`____________
`
`
`
`Before BRYAN F. MOORE, PATRICK R. SCANLON, and
`MINN CHUNG, Administrative Patent Judges.
`
`SCANLON, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Termination of Trial
`37 C.F.R. §§ 42.72 and 42.73
`
`
`
`IPR2016-01907
`Patent 7,808,488 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 39
`
`(“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. 2010. 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 40.
`
`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
`
`7,808,488 B2 (Ex. 1001, “the ’488 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
`
`
`
`IPR2016-01907
`Patent 7,808,488 B2
`
`parties and minimizing the financial and other costs associated with the
`
`various proceedings involving the ’488 patent. Id. at 4–5.
`
`We note the advanced nature of this inter partes review proceeding.
`
`The parties have completed all briefing and the Board has held an oral
`
`hearing. The Joint Motion to Terminate, however, was filed approximately
`
`two months prior to the statutory deadline for rendering a Final Written
`
`Decision. Under the particular circumstance of this case, 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.
`
`
`
`Accordingly, it is
`
`ORDERED that the parties’ Joint Request (Paper 40) to have the
`
`settlement agreement (Ex. 2010) treated as confidential business
`
`information, kept separate from the file of the ’488 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 39) is granted; and
`
`FURTHER ORDERED that this inter partes review is hereby
`
`terminated.
`
`
`
`
`3
`
`
`
`IPR2016-01907
`Patent 7,808,488 B2
`
`
`
`PETITIONER:
`
`James Heintz
`Jim.heintz@dlapiper.com
`
`Brian Erickson
`Brian.erickson@dlapiper.com
`
`
`PATENT OWNER:
`
`Michael Fleming
`mfleming@irell.com
`
`Babak Redjaian
`bredjaian@irell.com
`
`
`
`
`
`
`
`4
`
`
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