`$71-272-7822
`
`Paper 39
`Entered: February 9, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SONY CORPORATION,
`Petitioner,
`
`V.
`
`ONE-E-WAY,INC.,
`Patent Owner.
`
`Case IPR2016-01639
`Patent 9,282,396 B2
`
`Before DAVID C. MCKONE, ROBERT J. WEINSCHENK,and
`JOHN F. HORVATH,Administrative Patent Judges.
`
`WEINSCHENK,Administrative Patent Judge.
`
`DECISION
`Termination of the Proceeding
`37 CFR. §§ 42.72 and 42.74
`
`
`
`IPR2016-01639
`Patent 9,282,396 B2
`
`I.
`
`INTRODUCTION
`
`Theparties filed a Joint Motion to Terminate Proceedings. Paper 36
`(“Motion”or “Mot.”). The parties also filed what they indicate is a true
`copy of a Confidential Settlement and License Agreement (Ex. 1018,
`“Agreement”). The parties identify the Agreement as business confidential
`information and request that the Agreement be kept separate from the patent
`file. Paper 37 (“Joint Request”). For the reasons discussed below,the
`Motion and Joint Request are granted.
`
`II.
`
`ANALYSIS
`
`Wehave not madea decision on the merits in this proceeding. The
`
`parties indicate that, pursuant to the Agreement, they havesettled their
`dispute regarding U.S. Patent No. 9,282,396 B2. Mot. 1. The parties
`representthat “[o]ther than as indicated in the Agreement Exhibit 1018,
`there are no written or oral agreements or understandings, including any
`collateral agreements, betweentheparties, including but not limited to
`licenses, covenants not to sue, confidentiality agreements, or other
`agreements of any kind, that are made in connection with,or in
`contemplation of, the termination of this proceeding.” Jd. Underthese
`circumstances, we determinethat it is appropriate to terminate this
`proceeding. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. Wealso determine
`that it is appropriate to treat the Agreementas business confidential
`informationto be kept separate from the patentfile. See 35 U.S.C. § 317(b);
`
`37 C.F.R. § 42.74(c).
`
`
`
`IPR2016-01639
`Patent 9,282,396 B2
`
`I.
`
`ORDER
`
`In consideration of the foregoing,it is hereby:
`
`ORDEREDthatthe Joint Motion to Terminate Proceedingsis
`
`granted;
`FURTHER ORDEREDthatthis proceeding is terminated astoall
`
`parties; and
`FURTHER ORDEREDthatthe Joint Request to treat the Confidential
`
`Settlement and License Agreement (Ex. 1018) as business confidential
`
`information to be kept separate from the patentfile is granted.
`
`
`
`IPR2016-01639
`Patent 9,282,396 B2
`
`PETITIONER:
`
`John Flock
`Paul T. Qualey
`ANDREWS KURTH KENYON LLP
`johnflock@andrewskurthkenyon.com
`paulqualey@andrewskurthkenyon.com
`
`PATENT OWNER:
`
`Daphne Burton
`BURTON IP LAW GROUP
`dburton@burtoniplaw.com
`
`Thomas D. Robbins
`tom@trpatents.com
`
`Douglas G. Muehlhauser
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2dgm@knobbe.com
`
`
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