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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________________________________
`
`SONY CORPORATION; SONY CORPORATION OF AMERICA;
`SONY ELECTRONICS, INC.; SONY MOBILE
`COMMUNICATIONS AB; SONY MOBILE COMMUNICATIONS
`(USA) INC.; SONY COMPUTER ENTERTAINMENT INC. AND
`SONY COMPUTER ENTERTAINMENT AMERICA LLC
`Petitioner
`
`v.
`
`STRAIGHT PATH IP GROUP, INC.
`Patent Owner
`_____________________________________________
`
`Case IPR2014-00230
`Patent 6,108,704
`_______________________________________________
`
`SONY AND STRAIGHT PATH’S JOINT MOTION TO TERMINATE
`PROCEEDING PURSUANT TO 37 C.F.R. §42.74
`_______________________________________________
`
`
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`
`
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`
`
`Pursuant to the Patent Trial and Appeal Board’s Order (Paper No. 9)
`
`entered April 28, 2014, Petitioner Sony Corporation (“Sony”) and Patent Owner
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`Straight Path IP Group, Inc. ( “Straight Path”) jointly request termination of
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`Inter Partes Review proceeding IPR2014-00230, relating to patent U.S. Patent
`
`No. 6,108,704 (the ’704 Patent), with respect to Sony pursuant to 37 C.F.R. §
`
`42.74. No other petitioners remain in the Inter Partes Review proceeding, and
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`the parties request termination of the proceeding.
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`Straight Path commenced litigation against Sony (and other Real Parties in
`
`Interest identified in Sony’s Petition) before the International Trade Commission
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`and in Federal District Court in Certain Point-to-Point Network Communication
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`Devices and Products Containing Same, Inv. No. 337-TA-892 (U.S.I.T.C., filed
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`Aug. 1, 2013) (“ITC Investigation”) and Straight Path IP Group, Inc. v. Sony
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`Corp. et al.1:13-cv-01071-AJT (E.D. Va., filed Aug. 1, 2013) (“District Court
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`Litigation”).
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`Sony filed its Petition for Inter Partes Review of the ’704 Patent on
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`December 5, 2013. Straight Path filed a preliminary response on March 21, 2014.
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`No decision on institution has been entered in this proceeding, and one is not
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`expected until approximately June 21, 2014.
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`The Parties have now settled their dispute with respect to the ’704 Patent,
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`and have reached agreement to terminate this proceeding.
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`
`
`1
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`
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`Filed concurrently herewith is a complete, true and correct copy of an
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`agreement to settle this Inter Partes Review proceeding as well as to dismiss Sony
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`(and other Real Parties in Interest) as respondents in the ITC Investigation and as
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`defendants in the District Court Litigation. (See Exhibit 1047). The parties
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`request that the settlement agreement be treated as business confidential
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`information, and kept separate from the files of this proceeding in accordance
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`with 37 C.F.R. § 42.74(c). A request for treatment of the settlement agreement as
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`confidential business information is submitted herewith.
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`Sony filed two related Petitions for Inter Partes Review on December 5,
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`2013. Those proceedings are IPR2014-00229, relating to U.S. Patent No.
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`6,131,121 and IPR2014-00231, relating to U.S. Patent No. 6,009,469. The Parties
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`are concurrently requesting termination of those proceedings.
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`The settlement agreement does not involve other parties in the Related
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`Proceedings identified in Patent Owner’s Mandatory Notices filed December 26,
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`2013. (Paper 7.) Accordingly, those proceedings may continue despite this
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`settlement.
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`Settlement and termination of this proceeding as jointly requested by the
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`Parties is appropriate because doing so promotes judicial economy and furthers
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`the policy of the Board. See, e.g., Office Patent Trial Practice Guide, 77 Fed.
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`Reg. 48756, 48768 (Aug. 14, 2012).
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`
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`2
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`
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`CONCLUSION
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`Therefore, Sony and Straight Path respectfully request that Sony be
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`dismissed from Inter Partes Review of U.S. Patent No. 6,108,704, Case No.
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`IPR2014-00230 and that the proceeding be terminated.
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`
`
`
`Dated: April 28, 2014
`
`
`/Edmund J. Walsh/
`Michael N. Rader, Reg. No. 52,146
`Edmund J. Walsh, Reg. No. 32,950
`Randy J. Pritzker, Reg. No. 35,986
`
`WOLF GREENFIELD & SACKS, P.C.
`600 Atlantic Ave.
`Boston, MA 02210-2206
`Tel: 617-646-8000
`
`Counsel for Petitioner
`
`
`Respectfully submitted,
`
`/ Michelle M. Chatelain/
`Patrick J. Lee, Reg. No. 61,746
`Michelle M. Chatelain, Reg. No. 71,435
`
`FISCH HOFFMAN SIGLER LLP
`5335 Wisconsin Ave., N.W., 8th Floor
`Washington, D.C. 20015
`Tel: 202-362-3501
`
`Counsel for Patent Owner
`
`
`
`
`
`
`
`
`
`3
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`
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that this Joint Motion to Terminate
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`Proceedings was served, by agreement of the parties, by electronic mail on counsel
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`for the Patent Owner on April 28, 2014 as follows:
`
`Patrick J. Lee (Reg. No. 61,746)
`Michelle M. Chatelain (Reg. No. 71,435)
`Patrick.lee@fischllp.com
`Michelle.chatelain@fischllp.com
`
`
`
`Dated: April 28, 2014
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`/Edmund J. Walsh/
`Michael N. Rader, Reg. No. 52,146
`Edmund J. Walsh, Reg. No. 32,950
`Randy J. Pritzker, Reg. No. 35,986
`WOLF GREENFIELD & SACKS, P.C.
`600 Atlantic Ave.
`Boston, MA 02210-2206
`Tel: 617-646-8000
`
`
`
`
`
`
`
`4
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`
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