`Tel: 571-272-7822
`
`
`
`
`Paper 54
`Entered: December 3, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`WINTEK CORPORATION,
`Petitioner,
`
`v.
`
`TPK TOUCH SOLUTIONS,
`Patent Owner.
`_______________
`
`Case IPR2013-005671
`Patent 8,217,902 B2
`_______________
`
`Before TONI R. SCHEINER, JOSIAH C. COCKS, and
`RICHARD E. RICE, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`DECISION
`Termination of the Proceeding
`35 U.S.C. § 317 and 37 C.F.R. § 42.72
`
`
`
`
`
`
`1 IPR2014-00541 has been joined with IPR2013-00567. See IPR2013-
`00567, Paper 23.
`
`
`
`IPR2013-00567
`Patent 8,217,902 B2
`
`On November 25, 2014, Petitioner, Wintek Corporation, and Patent
`
`Owner, TPK Touch Solutions, Inc. (collectively referred to as “the Parties”)
`filed a joint motion to terminate this inter partes review involving U.S.
`Patent 8,217,902. Paper 52 (“Joint Motion to Terminate”); see 35 U.S.C
`§ 317; 37 C.F.R. § 42.72. Authorization to file the motion was given via e-
`mail correspondence from Board personnel on November 21, 2014. Along
`with the Joint Motion to Terminate, the Parties filed a true copy of their
`written settlement agreement (Ex. 2029), as well as a joint request (Paper
`53) to have their settlement agreement treated as business confidential
`information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`
`The Parties state in their Joint Motion to Terminate:
`
`The parties respectfully submit that termination is
`appropriate because Patent Owner has agreed to license U.S.
`Patent No. 8,217,902 to Petitioner (see Settlement Agreement
`§ 2.1), the parties have settled all disputes with respect to U.S.
`Patent No. 8,217,902 and the parties have agreed to terminate
`this inter partes review. No public interest or other factors
`militate against termination of this proceeding.
`
`Paper 52, 2.
`
`The parties also state that “Patent Owner represents that it does not
`contemplate initiating any proceedings involving U.S. Patent No. 8,217,902
`in the foreseeable future, either against Petitioner or any third party.” Id.
`The Parties further state that they have agreed to dismiss with prejudice
`litigation relating to U.S. Patent 8,217,902 styled TPK Touch Solutions Inc.
`v. Wintek Corp., Civ. A. No. 3:13-CV-02218-VC (N.D. Cal.). Id. at 1.
`
`The Parties are reminded that the Board is not a party to the
`settlement, and may identify independently any question of patentability.
`
`
`
`2
`
`
`
`IPR2013-00567
`Patent 8,217,902 B2
`
`37 C.F.R. § 42.74(a). Generally, however, the Board expects that a
`proceeding will terminate after the filing of a settlement agreement. See,
`e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug.
`14, 2012).
`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.” The
`requirement for terminating review with respect to Wintek is met.
`Furthermore, under 35 U.S.C. § 317(a), “[i]f no petitioner remains in the
`inter partes review, the Office may terminate the review or proceed to a
`final written decision under section 318(a).” Wintek is the sole petitioner in
`this review. The Board has discretion to terminate this review with respect
`to TPK.
`
`Upon consideration of the circumstances of this case, the panel has
`determined to terminate this inter partes review as to both Wintek and TPK
`without rendering a final written decision. The oral argument scheduled for
`December 12, 2014 is cancelled.
`
`TPK’s Motion to Seal (Paper 28) is pending. Because this proceeding
`is terminated without rendering a final written decision, the Motion to Seal is
`dismissed as moot. The subject paper (Ex. 2019) of the Motion to Seal is
`hereby expunged.
`It is
`ORDERED that, as was requested timely by the Parties (Paper 53),
`the settlement agreement (Paper 2029) will be treated as business
`confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c);
`
`
`
`3
`
`
`
`IPR2013-00567
`Patent 8,217,902 B2
`
`FURTHER ORDERED that TPK’s Motion to Seal (Paper 28) is
`dismissed as moot;
`FURTHER ORDERED that Exhibit 2019 is hereby expunged;
`FURTHER ORDERED that the oral argument scheduled for
`December 12, 2014 is cancelled; and
`FURTHER ORDERED that the joint motion to terminate IPR2013-
`00567 is granted and this proceeding is hereby terminated.
`
`
`
`PETITIONER:
`
`Joseph E. Palys
`Naveen Modi
`PAUL HASTINGS LLP
`josephpalys@paulhastings.com
`naveenmodi@paulhastings.com
`
`PATENT OWNER:
`
`Joseph J. Richetti
`BRYAN CAVE LLP
`joe.richetti@bryancave.com
`
`David Bilsker
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`davidbilsker@quinnemanuel.com
`
`
`
`4
`
`
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