`Date: February 26, 2018
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY CORP.
`Petitioner
`
`v.
`
`ONE-E-WAY, INC.
`Patent Owner
`___________
`
`Case IPR2018-00216 (Patent 7,865,258)
`Case IPR2018-00217 (Patent 7,865,258)
`Case IPR2018-00218 (Patent 8,131,391)
`Case IPR2018-00219 (Patent 8,131,391)1
`___________
`
`Before KARL D. EASTHOM, MATTHEW R. CLEMENTS, and
`SCOTT E. BAIN, Administrative Patent Judges.
`
`BAIN, Administrative Patent Judge.
`
`
`DECISION
`Joint Motion to Terminate
` 37 C.F.R. §§ 42.72, 42.74
`
`
`1 This Decision addresses issues that are identical in all four cases. We, therefore,
`exercise our discretion to issue one Decision to be filed in each case. The parties
`are not authorized to use this style heading for any subsequent papers.
`
`
`
`IPR2018-00216 (Patent 7,865,258)
`IPR2018-00217 (Patent 7,865,258)
`IPR2018-00218 (Patent 8,131,391)
`IPR2018-00219 (Patent 8,131,391)
`
`
`
`
`
`
`
`On February 9, 2018, the parties filed, in each of these proceedings, a Joint
`Motion to Terminate (Paper 6, “Joint Motion”),2 a Confidential Settlement and
`License Agreement (Exhibit 1015, “Settlement Agreement”), and a Joint Request
`to File the Settlement Agreement as Business Confidential Information Pursuant to
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (Paper 7, “Joint Request”).
`In the Joint Motions, the parties state that they have resolved their dispute
`regarding the challenged patents pursuant to the Settlement Agreement. See, e.g.,
`Joint Motion 1. The parties further state that they have settled and are filing a
`motion to “terminate the Sony Respondents from In re Certain Wireless Headsets,
`Inv. No. 337-TA-943,” a case pending before the U.S. International Trade
`Commission which involves the challenged patents. Id. at 2. The parties represent
`that there are no other written or oral agreements between them “that are made in
`connection with, or in contemplation of, the termination of this proceeding.” Id. at
`1.
`
`We have not yet decided whether to institute trial in any of these
`proceedings.
`Under these circumstances, we determine it is appropriate to terminate these
`proceedings without rendering any further decisions. Therefore, each of the Joint
`Motions and Joint Requests is GRANTED.
`
`
`
`
`2 Citations are to IPR2018-00216 unless otherwise noted. Substantially identical
`papers were filed in the each of the other proceedings.
`
`
`2
`
`
`
`
`IPR2018-00216 (Patent 7,865,258)
`IPR2018-00217 (Patent 7,865,258)
`IPR2018-00218 (Patent 8,131,391)
`IPR2018-00219 (Patent 8,131,391)
`
`
`
`ORDER
`
`
`
`Accordingly, it is
`ORDERED that the parties’ Joint Requests to File [and treat] the Settlement
`Agreement [IPR2018-00216, Ex. 1015; IPR2018-00217, Ex. 1014; IPR2018-
`00218, Ex. 1015; IPR2018-00219, Ex. 1014] as Business Confidential Information
`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is GRANTED; and
`FURTHER ORDERED that each Joint Motion to Terminate is GRANTED,
`and each of these proceedings is hereby terminated.
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`
`
`
`
`
`IPR2018-00216 (Patent 7,865,258)
`IPR2018-00217 (Patent 7,865,258)
`IPR2018-00218 (Patent 8,131,391)
`IPR2018-00219 (Patent 8,131,391)
`
`
`PETITIONER:
`
`John Flock
`Paul T. Qualey
`ANDREWS KURTH KENYON LLP
`jflock@andrewskurthkenyon.com
`pqualey@andrewskurthkenyon.com
`
`
`PATENT OWNER:
`
`Douglas G. Muehlhauser
`Alan Laquer
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2dgm@knobbe.com
`2agl@knobbe.com
`
`4
`
`
`
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