Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 13
`Entered: February 21, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY INTERACTIVE ENTERTAINMENT LLC,
`Petitioner,
`
`v.
`
`TECHNO VIEW IP, INC.,
`Exclusive Licensee of the Patent Owner.1
`____________
`
`Case IPR2018-01044 (Patent 7,666,096 B2)
` Case IPR2018-01045 (Patent 8,206,218 B2)2
`____________
`
`
`Before WILLIAM V. SAINDON, PATRICK R. SCANLON, and
`NORMAN H. BEAMER Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Joint Motions to Terminate Proceedings Due to
`Settlement after Institution and
`Granting Joint Requests to Treat Settlement Agreement as
`Business Confidential Information
`35 U.S.C. § 317; 37 C.F.R. §§ 42.72, 42.73, 42.74
`
`
`
`1 TD Vision Corporation S.A. de C.V. is the Patent Owner. Paper 4.
`2 This Order applies to each of the listed cases. We exercise our discretion to issue
`one Order to be docketed in each case.
`
`
`571-272-7822
`
`
`
`
`
`Paper 13
`Entered: February 21, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY INTERACTIVE ENTERTAINMENT LLC,
`Petitioner,
`
`v.
`
`TECHNO VIEW IP, INC.,
`Exclusive Licensee of the Patent Owner.1
`____________
`
`Case IPR2018-01044 (Patent 7,666,096 B2)
` Case IPR2018-01045 (Patent 8,206,218 B2)2
`____________
`
`
`Before WILLIAM V. SAINDON, PATRICK R. SCANLON, and
`NORMAN H. BEAMER Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Joint Motions to Terminate Proceedings Due to
`Settlement after Institution and
`Granting Joint Requests to Treat Settlement Agreement as
`Business Confidential Information
`35 U.S.C. § 317; 37 C.F.R. §§ 42.72, 42.73, 42.74
`
`
`
`1 TD Vision Corporation S.A. de C.V. is the Patent Owner. Paper 4.
`2 This Order applies to each of the listed cases. We exercise our discretion to issue
`one Order to be docketed in each case.
`
`
`
`IPR2018-01044 (Patent 7,666,096 B2)
`IPR2018-01045 (Patent 8,206,218 B2)
`
`
`INTRODUCTION
`I.
`Petitioner and Patent Owner (collectively referred to as “the Parties”) have
`requested that the above-identified inter partes review proceedings be terminated
`pursuant to a settlement. On February 11, 2019, we authorized the Parties via
`email to file joint motions to terminate the above-identified proceedings. On
`February 11, 2019, the Parties filed Joint Motions to Terminate the proceedings
`(“Joint Motions”). Paper 11.3 The Parties filed a Confidential Settlement and
`License Agreement (Exhibit 1050, “Settlement Agreement”) and, as part of the
`Joint Motions, requested that the Settlement Agreement be kept confidential and
`separate pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (Paper 11, 3).
`II. DISCUSSION
`Under 35 U.S.C. § 317(a), “[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.” It is also provided in
`35 U.S.C. § 317(a) that if no petitioner remains in the inter partes review, the
`Office may terminate the review.
`In the Joint Motions, the Parties represent that they have reached an
`agreement to jointly seek termination of this inter partes review proceeding, and
`that the filed copies of the Settlement Agreement are true and complete copies.
`Paper 11, 3. The Parties further represent that their settlement agreement resolves
`all currently pending Patent Office and District Court proceedings between the
`Parties involving the ’096 patent and ’218 patent. Id at 5.
`We instituted a trial on the above-identified proceeding on December 4,
`
`
`3 Our citations to Papers and Exhibits are to those filed in IPR2018-01044. Similar
`Papers and Exhibits were filed in IPR2018-01045.
`2
`
`
`
`
`
`IPR2018-01044 (Patent 7,666,096 B2)
`IPR2018-01045 (Patent 8,206,218 B2)
`
`2018. Paper 9. We have not yet decided the merits of the proceedings, and final
`written decisions have not been entered in the proceedings. Notwithstanding that
`the proceedings have moved beyond the preliminary stage, the Parties have shown
`adequately that the termination of the proceedings are appropriate. Under these
`circumstances, we determine that good cause exists to terminate the proceedings
`with respect to the Parties.
`As part of the Joint Motions, the Parties also requested that the Settlement
`Agreement be treated as business confidential information and be kept separate
`from the files of the respective patents involved in these inter partes proceedings.
`Paper 11, 3. After reviewing the Settlement Agreement between Petitioner and
`Patent Owner, we find that the Settlement Agreement contains confidential
`business information regarding the terms of settlement. We determine that good
`cause exists to treat the Settlement Agreement between Petitioner and Patent
`Owner as business confidential information pursuant to 35 U.S.C. § 317(b) and 37
`C.F.R. § 42.74(c).
`This Order does not constitute a final written decision pursuant to 35 U.S.C.
`§ 318(a).
`
`III. ORDER
`Accordingly, for the reasons discussed above, it is:
`ORDERED that the Joint Motions to Terminate are granted, and each of
`IPR2018-01044 and IPR2018-01045 is terminated with respect to Petitioner and
`Patent Owner pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72; and
`
`FURTHER ORDERED that the requests to Treat the Settlement Agreement
`as Business Confidential Information are granted, and the Settlement Agreement
`shall be kept separate from the files of Patent 7,666,096 and Patent 8,206,218, and
`made available only to Federal Government agencies on written request, or to any
`
`
`
`3
`
`
`
`
`
`IPR2018-01044 (Patent 7,666,096 B2)
`IPR2018-01045 (Patent 8,206,218 B2)
`
`person on a showing of good cause, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(c).
`
`
`
`For PETITIONER:
`Abran J. Kean
`Eric A. Buresh
`ERISE IP, P.A.
`abran.kean@eriseip.com
`eric.buresh@eriseip.com
`
`For PATENT OWNER:
`Thomas Kramer
`O’KELLY ERNST & JOYCE, LLC
`tkramer@oelegal.com
`
`Thomas Meagher
`Alan Pattillo
`MEAGHER EMANUEL LAKS GOLDBERG & LIAO, LLP
`tmeagher@meagheremanuel.com
`cpattillo@meagheremanuel.com
`
`
`
`
`4
`
`
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