UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` ____________
`
`SONY INTERACTIVE ENTERTAINMENT LLC
`Petitioner
`
`v.
`
`TECHNO VIEW IP, INC.
`Patent Owner
`
`____________
`
`Case No. IPR20218-01045
`Patent No. 8,206,218
` ____________
`
`
`
`
`
`
`JOINT MOTION TO TERMINATE INTER PARTES REVIEW OF U.S.
`PATENT 8,206,218 UNDER 37 C.F.R. § 42.72 AND TO KEEP
`CONFIDENTIAL AND SEPARATE UNDER 35 U.S.C. § 317(b) AND 37
`C.F.R. § 42.74(c)
`
`
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` ____________
`
`SONY INTERACTIVE ENTERTAINMENT LLC
`Petitioner
`
`v.
`
`TECHNO VIEW IP, INC.
`Patent Owner
`
`____________
`
`Case No. IPR20218-01045
`Patent No. 8,206,218
` ____________
`
`
`
`
`
`
`JOINT MOTION TO TERMINATE INTER PARTES REVIEW OF U.S.
`PATENT 8,206,218 UNDER 37 C.F.R. § 42.72 AND TO KEEP
`CONFIDENTIAL AND SEPARATE UNDER 35 U.S.C. § 317(b) AND 37
`C.F.R. § 42.74(c)
`
`
`
`
`
`IPR2018-01045
`U.S. Patent No. 8,206,218
`
`
`
`Pursuant to 37 C.F.R. § 42.74, Petitioner Sony Interactive Entertainment
`
`LLC (“Sony”) and Patent Owner Techno View IP, Inc. (“TVIP”) request
`
`termination of the Petition for Inter Partes Review of Claim 1 of U.S. Patent
`
`8,206,218 (“the ‘218 Patent”) in Case IPR2018-01045.
`
`
`
`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), the parties also
`
`jointly request that the agreement between the parties (Exhibit 1049) filed
`
`concurrently herewith (a) be treated as business confidential information, (b) be
`
`kept separate from the file of the involved patent, and (c) be made available only as
`
`permitted pursuant to the provisions of 37 U.S.C. § 317(b) and 37 C.F.R. §
`
`42.74(c).
`
`I.
`
`
`
`STATEMENT OF RELIEF REQUESTED
`
`Pursuant to 35 U.S.C. § 317, Sony and TVIP jointly request termination of
`
`this inter partes review. On February 8, 2019, the parties informed the Board of
`
`their agreement via email and requested authorization to file a joint motion to
`
`terminate the petition with respect to both the Patent Owner and Petitioner. As set
`
`forth in an email dated February 11, 2019, the Board authorized the filing of the
`
`requested joint motion to terminate this petition. Accordingly, the parties jointly
`
`request termination of the present proceeding.
`
`
`
`IPR2018-01045
`U.S. Patent No. 8,206,218
`
`
`
`The parties are concurrently filing a copy of the license agreement as Exhibit
`
`1049 and request that this agreement be treated as business confidential
`
`information and kept separate pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74.
`
`See U.S.C. § 317(b) (requiring parties to file agreements in writing). The
`
`undersigned represent that there are no other agreements, oral or written, between
`
`the parties made in connection with, or in contemplation of, the termination of the
`
`present proceeding and that Exhibit 1049 represents a true and accurate copy of the
`
`agreement between the parties that resolves the present proceeding.
`
`II. EXPLANATION OF WHY TERMINATION IS APPROPRIATE
`
`
`
`On July 23, 2017, Patent Owner brought a suit against Sony and several
`
`related Sony entities in the United States District Court for the Central District of
`
`California (Case No. 8:17-cv-01268), asserting infringement against Petitioner of
`
`the ‘218 Patent and U.S. Patent No. 7,666,096. Petitioner filed its petition for inter
`
`partes review of the ‘218 Patent on May 22, 2018. The Board issued an Institution
`
`Decision instituting this proceeding on December 4, 2018. The parties have now
`
`resolved their dispute with regards to the ‘218 Patent and have reached an
`
`agreement to terminate this proceeding.
`
`
`
`Public policy favors terminating the present petition for inter partes review.
`
`Congress and federal courts have expressed a strong interest in encouraging
`
`
`
`IPR2018-01045
`U.S. Patent No. 8,206,218
`
`settlement in litigation. See, e.g., Delta Air Lines, Inc. v. August, 450 U.S. 346,
`
`352 (1981) (“The purpose of [Fed. R. Civ. P.] 68 is to encourage the settlement of
`
`litigation.”); Bergh v. Dept. of Transp., 794 F.2d 1575, 1577 (Fed. Cir. 1986)
`
`(“The law favors settlement of cases.”), cert. denied, 479 U.S. 950 (1986). The
`
`Federal Circuit places a particularly strong emphasis on settlement. See Cheyenne
`
`River Sioux Tribe v. U.S., 806 F.2d 1046, 1050 (Fed. Cir. 1986) (noting that the
`
`law favors settlement to reduce antagonism and hostility between parties). And, the
`
`Board’s Trial Practice Guide stresses that “[t]here are strong public policy reasons
`
`to favor settlement between the parties to a proceeding.” Office Patent Trial
`
`Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012).
`
`
`
`Ending this petition for IPR early promotes the Congressional goal of
`
`establishing a more efficient patent system by limiting unnecessary and
`
`counterproductive costs. See Changes to Implement Inter Partes Review
`
`Proceedings, Post-Grant Review Proceedings, and Transitional Program for
`
`Covered Business Method Patents, 77 Fed. Reg. 48,680 (Aug. 14, 2012).
`
`Permitting termination provides certainty and fosters an environment that promotes
`
`settlements, creating a timely, cost-effective alternative to litigation. Additionally,
`
`termination of this petition for IPR is appropriate as the Board has not yet “decided
`
`the merits of the proceeding.” See, e.g., Office Patent Trial Practice Guide, 77 Fed.
`
`
`
`IPR2018-01045
`U.S. Patent No. 8,206,218
`
`Reg. 48,756, 48,768 (Aug. 14, 2012). Therefore, the parties respectfully request
`
`termination of this Inter Partes Review of U.S. Patent No. 8,206,218 (Case
`
`IPR2018-01045).
`
`III.
`
`
`
`
`IDENTIFICATION OF RELATED PROCEEDINGS BEFORE THE
`OFFICE
`
`The Parties identify Case No. IPR2018-01044, challenging U.S. Patent No.
`
`7,666,096, as the only other known proceeding pending before the Office and note
`
`that, concurrently with this Motion, the parties are also seeking termination of that
`
`proceeding. Neither Sony nor TVIP is aware of any other pending Office
`
`proceedings involving the ‘218 Patent.
`
`IV.
`
`
`
`IDENTIFICATION OF ALL PARTIES IN RELATED LITIGATION
`
`In addition to TVIP and Sony, Sony Interactive Entertainment, Inc., Sony
`
`Interactive Entertainment America LLC, and Sony Corporation of America were
`
`named as parties (as defendants) in the Case No. 8:17-cv-01268 (C.D. Cal.), but
`
`were either dropped from the case or no longer exist. The ‘218 Patent has also been
`
`asserted against Facebook Technologies, LLC and Facebook, Inc. in Case No.
`
`1:17-cv-00386 (D. Del.).
`
`V. CONCLUSION
`
`
`
`For the foregoing reasons, the Parties respectfully request termination of this
`
`inter partes review of the ‘218 Patent. At least due to its confidential nature, the
`
`
`
`Parties’ Agreement (Exhibit 1049) should be treated as confidential business
`
`IPR2018-01045
`U.S. Patent No. 8,206,218
`
`information and kept separate.
`
`Respectfully submitted,
`
`
`
`
`
`Erise IP, P.A.
`
`BY: /s/ Abran J. Kean
`Abran J. Kean, Reg. No. 58,540
`5600 Greenwood Plaza Blvd., Ste. 200
`Greenwood Village, CO 80111
`P: (913) 777-5600
`F: (913) 777-5601
`abran.kean@eriseip.com
`
`Eric A. Buresh, Reg. No. 50,394
`7015 College Blvd., Ste. 700
`Overland Park, KS 66211
`P: (913) 777-5600
`F: (913) 777-5601
`eric.buresh@eriseip.com
`
`COUNSEL FOR PETITIONER
`
`
`
`
`
`
`O’Kelly & Ernst, LLC
`
`BY: /s/ Thomas H. Kramer
`Thomas H. Kramer, Reg. No. 71,042
`901 N. Market Street, Ste. 1000
`Wilmington, Delaware 19801
`P: (302) 778-4000
`tkramer@oelegal.com
`
`Thomas F. Meagher, Reg. No. 29,831
`Alan C. Pattillo, Reg. No. 76,601
`Meagher Emanuel Laks Goldberg &
`Liao, LLP
`One Palmer Square, Ste. 325
`Princeton, NJ 08542
`P: (609) 454-3500
`tmeagher@meagheremanuel.com
`cpattillo@meagheremanuel.com
`
`COUNSEL FOR PATENT OWNER
`
`
`
`IPR2018-01045
`U.S. Patent No. 8,206,218
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on February
`
`11, 2019, the foregoing Joint Motion To Terminate Inter Partes Review Of U.S.
`Patent 8,206,218 Under 37 C.F.R. § 42.72 And To Keep Confidential And
`Separate Under 35 U.S.C. § 317(b) And 37 C.F.R. § 42.74(c) and Exhibit 1049
`were served via electronic filing with the Board and via Electronic Mail on the
`following counsel of record for Patent Owner:
`
`Thomas H. Kramer, Reg. No. 71,042
`O’Kelly & Ernst, LLC
`901 N. Market Street, Suite 1000 Wilmington, Delaware 19801
`P: (302) 778-4000
`tkramer@oelegal.com
`
`Thomas F. Meagher, Reg. No. 29,831
`Alan C. Pattillo, Reg. No. 76,601
`Meagher Emanuel Laks Goldberg & Liao, LLP
`One Palmer Square, Suite 325
`Princeton, NJ 08542
`P: (609) 454-3500
`tmeagher@meagheremanuel.com
`cpattillo@meagheremanuel.com
`
`
`
`BY: /s/ Abran J. Kean
`Abran J. Kean, Reg. No. 58,540
`
`ATTORNEY FOR PETITIONER
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
