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Trials@uspto.gov Paper No. 8, IPR2018-00346
`571.272.7822 Paper No. 8, IPR2018-00351
` Paper No. 8, IPR2018-00352
` Paper No. 8, IPR2018-00358
` Paper No. 8, IPR2018-00360
` Entered: April 23, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`HTC CORPORATION and HTC AMERICA, INC.,
`Petitioner,
`v.
`IPA TECHNOLOGIES, INC.,
`Patent Owner.
`_____________
`
`Cases1
`IPR2018-00346 (Patent 6,523,061 B1)
`IPR2018-00351 (Patent 6,757,718 B1)
`IPR2018-00352 (Patent 6,742,021 B1)
`IPR2018-00358 (Patent 6,742,021 B1)
`IPR2018-00360 (Patent 6,742,021 B1)
`_____________
`
`Before DEBRA K. STEPHENS, THOMAS L. GIANNETTI, and
`BART A. GERSTENBLITH, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`
`DECISION
`Termination and Settlement
`35 U.S.C. § 317; 37 C.F.R. §§ 42.72, 42.74
`
`1 This Decision addresses issues that apply to each case. We, therefore,
`exercise our discretion to issue one Decision to be filed in each case.
`
`

`

`IPR2018-00346 (Patent 6,523,061 B1)
`IPR2018-00351 (Patent 6,757,718 B1)
`IPR2018-00352 (Patent 6,742,021 B1)
`IPR2018-00358 (Patent 6,742,021 B1)
`IPR2018-00360 (Patent 6,742,021 B1)
`
`
`DISCUSSION
`I.
`In an e-mail dated April 16, 2018, we authorized the parties to file
`joint motions to terminate the instant proceedings with true copies of their
`agreement(s) in contemplation of termination and joint motions to treat the
`filed copies of their agreement(s) as business confidential information under
`37 C.F.R. § 42.74(c). The following day, the parties filed a Joint Motion to
`Terminate Pursuant to 35 U.S.C. § 317 (Paper 6), a copy of a written
`Settlement Agreement (Ex. 1035), and a Joint Request to Keep Separate
`Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74 (Paper 7) in each
`proceeding.2
`The parties indicate that they have settled their underlying dispute and
`have agreed to terminate these proceedings. Paper 6, 1. The parties filed
`what they represent is a true and correct copy of their written Settlement
`Agreement as Exhibit 1035, and indicate that there are no other collateral
`agreements referred to the Settlement Agreement, made in connection with,
`or in contemplation of, the termination of these proceedings. Id. at 5. The
`parties further indicate that they are moving to dismiss a related district court
`case between the parties involving the challenged patent. Id. at 3.
`Generally, the Board expects that a proceeding will terminate after the
`filing of a settlement agreement. See 35 U.S.C. § 317(a) (“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,
`
`2 In each proceeding, the Joint Motion is Paper 6, the Joint Request to Keep
`Separate is Paper 7, and the Settlement Agreement is Exhibit 1035.
`
`
`
`2
`
`

`

`IPR2018-00346 (Patent 6,523,061 B1)
`IPR2018-00351 (Patent 6,757,718 B1)
`IPR2018-00352 (Patent 6,742,021 B1)
`IPR2018-00358 (Patent 6,742,021 B1)
`IPR2018-00360 (Patent 6,742,021 B1)
`
`unless the Office has decided the merits of the proceeding before the request
`for termination is filed.”); 37 C.F.R. § 42.72 (“The Board may terminate a
`trial without rendering a final written decision, where appropriate, including
`. . . pursuant to a joint request under 35 U.S.C. 317(a) . . . .”); see also Office
`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012)
`(“The Board expects that a proceeding will terminate after the filing of a
`settlement agreement, unless the Board has already decided the merits of the
`proceeding.”). Here, a trial has not yet been instituted and the merits of the
`proceedings not yet decided. Accordingly, we are persuaded that, under
`these circumstances, termination of these proceedings is appropriate.
`Additionally, we grant the parties’ Joint Request to Keep Separate.
`See 35 U.S.C. § 317(b) (“At the request of a party to the proceeding, the
`agreement or understanding shall be treated as business confidential
`information, shall be kept separate from the file of the involved patents, and
`shall be made available only to Federal Government agencies on written
`request, or to any person on a showing of good cause.”); see also 37 C.F.R.
`§ 42.74(c) (same).
`This Decision does not constitute a final written decision pursuant to
`35 U.S.C. § 318(a).
`
`
`
`
`
`
`3
`
`

`

`IPR2018-00346 (Patent 6,523,061 B1)
`IPR2018-00351 (Patent 6,757,718 B1)
`IPR2018-00352 (Patent 6,742,021 B1)
`IPR2018-00358 (Patent 6,742,021 B1)
`IPR2018-00360 (Patent 6,742,021 B1)
`
`
`II. ORDER
`
`Accordingly, it is
`ORDERED that the parties’ Joint Motion to Terminate Pursuant to
`35 U.S.C. § 317 (Paper 6) is granted;
`FURTHER ORDERED that the parties’ Joint Request to Keep
`Separate Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74 (Paper 7) is
`granted;
`FURTHER ORDERED that the Settlement Agreement (Exhibit 1035)
`be treated as business confidential information, kept separate from the file of
`the above-referenced patents, and made 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); and
`FURTHER ORDERED that each of these proceedings is terminated.
`
`
`
`4
`
`

`

`IPR2018-00346 (Patent 6,523,061 B1)
`IPR2018-00351 (Patent 6,757,718 B1)
`IPR2018-00352 (Patent 6,742,021 B1)
`IPR2018-00358 (Patent 6,742,021 B1)
`IPR2018-00360 (Patent 6,742,021 B1)
`
`
`For PETITIONER:
`
`Eliot D. Williams
`H. Hopkins Guy
`Ali Dhanani
`BAKER BOTTS L.L.P.
`eliot.williams@bakerbotts.com
`hop.guy@bakerbotts.com
`ali.dhanani@bakerbotts.com
`
`
`
`For PATENT OWNER:
`
`Steven W. Hartsell
`Alexander E. Gasser
`Sarah E. Spires
`SKIERMONT DERBY LLP
`IPA_SDTeam@skiermontderby.com
`
`
`
`
`
`5
`
`

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