Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 11
`Entered: June 16, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`SONY CORPORATION,
`Petitioner,
`
`v.
`
`BROADCOM CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2017-00461
`Patent 7,616,955 B2
`____________
`
`
`
`
`
`Before JAMES B. ARPIN, BARBARA A. PARVIS, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`
`GALLIGAN, Administrative Patent Judge.
`
`
`
`
`
`
`
`DECISION
`Granting Petitioner’s Unopposed Motion to Dismiss Petition
`37 C.F.R. §§ 42.71(a), 42.74
`
`
`
`
`
`

`

`IPR2017-00461
`Patent 7,616,955 B2
`
`I.
`
`DISCUSSION
`
`On December 9, 2016, Sony Corporation (“Petitioner”) filed a
`
`Petition requesting inter partes review of claims 1–30 of U.S. Patent
`
`No. 7,616,955 B2. Paper 1. On June 14, 2017, Petitioner filed an
`
`unopposed Motion to Dismiss the Petition, accompanied by a true copy of a
`
`written agreement settling the parties’ disputes regarding the ’955 patent.
`
`Paper 91; Ex. 1009. Furthermore, Petitioner and Broadcom Corporation
`
`(“Patent Owner”) filed a Joint Request to have their agreement treated as
`
`business confidential information under 37 C.F.R. § 42.74(c). Paper 10.
`
`The Motion represents that the parties “have settled their disputes, and have
`
`reached an agreement to terminate this IPR.” Paper 9, 2. The parties further
`
`certify that there are no collateral agreements or understandings made in
`
`connection with, or in contemplation of, the termination of the proceeding;
`
`the related district court litigation also has been settled; and there currently is
`
`no other pending litigation or proceeding involving the ’955 patent, and
`
`none is contemplated in the foreseeable future. Id. at 3.
`
`This proceeding is in a preliminary stage, and we have not yet issued a
`
`Decision whether to institute an inter partes review. Under these
`
`
`1 Although titled “Unopposed Motion to Dismiss the Petition,” the Motion
`“request[s] termination of this inter partes review” pursuant to 35 U.S.C.
`§ 317(a). Paper 9, 2. Section 317(a) provides, in relevant part, “[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 the patent
`owner, unless the Office has decided the merits of the proceeding before the
`request for termination is filed.” 35 U.S.C. § 317(a) (emphasis added).
`Because we have not yet issued a Decision whether to institute an inter
`partes review, we treat the Motion as seeking dismissal of the Petition, as
`asserted in the Motion’s title.
`
`2
`
`

`

`IPR2017-00461
`Patent 7,616,955 B2
`
`circumstances, Petitioner has demonstrated that dismissal of its Petition is
`
`warranted, and we grant Petitioner’s Motion. See 37 C.F.R. § 42.71(a)
`
`(authorizing the Board to dismiss a petition). We also grant the parties’
`
`request to have their agreement treated as business confidential information
`
`pursuant to 37 C.F.R. § 42.74(c).
`
`
`
`II. ORDER
`
`Accordingly, it is:
`
`ORDERED that Petitioner’s Motion is granted and the Petition is
`
`dismissed; and
`
`ORDERED that the parties’ Joint Request that their agreement
`
`(Ex. 1009) be treated as business confidential information under 37 C.F.R.
`
`§ 42.74(c) is granted.
`
`
`
`
`
`3
`
`

`

`IPR2017-00461
`Patent 7,616,955 B2
`
`PETITIONER:
`
`Gregory S. Arovas
`Christopher Mizzo
`Robert A. Appleby
`Eugene Goryunov
`Craig Murray
`KIRKLAND & ELLIS LLP
`greg.arovas@kirkland.com
`chris.mizzo@kirkland.com
`robert.appleby@kirkland.com
`eugene.goryunov@kirkland.com
`craig.murray@kirkland.com
`
`
`PATENT OWNER:
`
`Daniel S. Young
`Chad E. King
`SWANSON & BRATSCHUN, LLC
`dyoung@sbiplaw.com
`cking@sbiplaw.com
`
`
`4
`
`