`Tel: 571.272.7822
`
`
`
`
`Paper 35
`Entered: June 4, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONOS, INC.,
`Petitioner,
`v.
`D&M HOLDINGS INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01045
`Patent 7,987,294 B2
`____________
`
`
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and
`JON M. JURGOVAN, Administrative Patent Judges.
`
`JURGOVAN, Administrative Patent Judge.
`
`
`
`
`
`JUDGMENT
`Termination of Proceeding
`37 C.F.R. § 42.73
`
`
`
`IPR2017-01045
`Patent 7,987,294 B2
`
`
`Petitioner, SONOS, INC. (“SONOS”), and Patent Owner, D&M
`HOLDINGS INC. (“D&M HOLDINGS”), jointly move to terminate the
`instant inter partes review in light of their settlement that resolves their
`dispute regarding U.S. Patent No. 7,987,294 B2 (“the ’294 patent”).
`Paper 34 (“Mot.”). The parties also filed a true copy of their written
`settlement agreement in connection with the termination as required by
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b). Ex. 1018. Pursuant to
`37 C.F.R. § 42.74(c), the parties additionally jointly request to treat the
`Settlement Agreement as business confidential information kept separate
`from the file of the involved patent. Mot. 1.
`For the reasons set forth below, the Joint Motion to Terminate this
`proceeding and the Joint Request to File Settlement Agreement as Business
`Confidential Information are granted.
`Under the Leahy-Smith America Invents Act, settlement between the
`parties to a proceeding is encouraged. Notably, 35 U.S.C. § 317(a), in part,
`provides the following (emphasis added):
`(a) IN GENERAL.—An 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. If the inter partes review is
`terminated with respect to a petitioner under this section, no
`estoppel under section 315(e) shall attach to the petitioner, or to
`the real party in interest or privy of the petitioner, on the basis of
`that petitioner’s institution of that inter partes review.
`Generally, the Board expects that a proceeding will terminate after the
`filing of a settlement agreement. See Office Patent Trial Practice Guide,
`77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Here, the parties indicate that
`their Settlement Agreement resolves the underlying district court litigations
`
`2
`
`
`
`IPR2017-01045
`Patent 7,987,294 B2
`
`related to the aforementioned inter partes review.1 Mot. 1. Although the
`instant inter partes review has been instituted, the proceeding is still in the
`briefing stage. We have not yet received a Reply, held an oral hearing, or
`entered a final written decision in this proceeding.
`Upon review of the procedural posture of this proceeding and the facts
`before us, we determine that the parties’ requests have merit, and that it is
`appropriate to terminate this proceeding.
`In consideration of the foregoing, it is hereby:
`ORDERED that the Joint Motion to Terminate is granted;
`FURTHER ORDERED that the instant inter partes review is
`terminated as to all parties including SONOS and D&M HOLDINGS; and
`FURTHER ORDERED that the Joint Request to File Settlement
`Agreement as Business Confidential Information and to keep such
`settlement agreement separate from the patent file, and to make it available
`only to Federal Government agencies on written request, or to any person on
`a showing of good cause, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(c), is granted.
`
`
`
`
`
`
`1 Sonos, Inc. v. D&M Holdings, Inc., No. 1:14-cv-01330 (D. Ct. Del. filed
`October 21, 2014) and Sonos, Inc. v. D&M Holdings, Inc., No. 1:16-cv-
`00141 (D. Ct. Del. filed February 27, 2015).
`
`3
`
`
`
`IPR2017-01045
`Patent 7,987,294 B2
`
`For PETITIONER:
`George I. Lee
`Sean M. Sullivan
`Rory P. Shea
`John Dan Smith III
`LEE SULLIVAN SHEA & SMITH LLP
`lee@leesulivanlaw.com
`sullivan@ls3ip.com
`shea@ls3ip.com
`smith@ls3ip.com
`
`For PATENT OWNER:
`Christopher J. Rourk
`Wasif H. Qureshi
`JACKSON WALKER LLP
`crourk@jw.com
`wqureshi@jw.com
`
`
`4
`
`
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