`Tel: 571-272-7822
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`Paper 13
`Entered: May 2, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
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`SONY CORPORATION
`Petitioner
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`v.
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`STRAIGHT PATH IP GROUP, INC.
`Patent Owner
`____________
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`Case IPR2014-00229 (Patent 6,131,121)
`Case IPR2014-00230 (Patent 6,108,704)
` Case IPR2014-00231 (Patent 6,009,469)1
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`
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`Before BRYAN F. MOORE, MIRIAM L. QUINN, and STACEY G. WHITE,
`Administrative Patent Judges.
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`WHITE, Administrative Patent Judge.
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`ORDER
`Motion to Terminate
`37 C.F.R. § 42.72
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`1 This Order addresses scheduling that is identical in the listed cases. We exercise
`our discretion to issue a single paper to be filed in each case. The parties are not
`authorized to use this style heading for any subsequent papers.
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`Cases IPR2014-00229, -230, -231
`Patents 6,131,121, 6,108,704, 6,009,464
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`On April 28, 2014, the parties filed joint motions to terminate the trial in
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`each of the instant proceedings under 35 U.S.C. § 317(a).2 Along with the
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`motions, the parties filed copies of a document they describe as the written
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`settlement agreement,3 as well as separate joint requests to treat the settlement
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`agreement as business confidential information under the provisions of 35 U.S.C.
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`§ 317(b) and 37 C.F.R. § 42.74(c).4 As the motions and exhibits in all three
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`proceedings are substantially similar, we refer herein to the papers filed in
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`IPR2014-00229 for convenience.
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`The instant proceedings are in the preliminary stage. Patent Owner has filed
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`preliminary responses in each of the instant proceedings.5 The Board, however,
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`has not determined whether trial will be instituted for any of the requests for inter
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`partes review.
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`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this
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`chapter shall be terminated with respect to any petitioner upon the joint request of
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`the petitioner and patent owner, unless the Office has decided the merits of the
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`proceeding before the request for termination is filed.” In the motions to terminate,
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`the parties state that they have settled their dispute with respect to the patents
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`involved in the proceedings, and have reached agreement to terminate these
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`proceedings. Paper 9, 1. Furthermore, the joint motion indicates that the parties
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`have agreed to dismiss Petitioner and other real parties-in-interest identified by
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`2 IPR2014-00229, Paper 9; IPR2014-00230, Paper 10, IPR2014-00231, Paper 9.
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`3 IPR2014-00229, Ex. 1047; IPR2014-00230, Ex. 1047, IPR2014-00231, Ex.
`1047.
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`4 IPR2014-00229, Paper 10; IPR2014-00230, Paper 11, IPR2014-00231, Paper 10.
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`5 IPR2014-00229, Paper 7; IPR2014-00230, Paper 8; IPR2014-00231, Paper 7.
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` 2
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`Cases IPR2014-00229, -230, -231
`Patents 6,131,121, 6,108,704, 6,009,464
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`Petitioner as respondents 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.) and
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`Straight Path IP Group, Inc. v. Sony Corp., No. 1:13-cv-01071-AJT (E.D. Va.).
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`Paper 9, 1-2. The parties argue that no other petitioner would remain in the instant
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`proceedings, and that termination of these proceedings promotes judicial economy
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`and furthers the policy of the Board. Id.
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`The Board generally expects that a proceeding will terminate after the filing
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`of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed.
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`Reg. 48,756, 48,768 (Aug. 14, 2012). Upon consideration of the parties’
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`arguments and the early stage of these proceedings, we agree with the parties that
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`terminating the instant proceedings with respect to both Petitioner and Patent
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`Owner, at this early juncture, promotes efficiency and minimizes unnecessary
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`costs. The Board is persuaded that, under these circumstances, it is appropriate to
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`enter judgment6 without rendering a final written decision. See 35 U.S.C. § 317(a);
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`37 C.F.R. § 42.72.
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`Accordingly, it is:
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`ORDERED that the joint motions to terminate these proceedings are
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`granted, and that these proceedings are hereby terminated as to all parties,
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`including Petitioner and Patent Owner;
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`FURTHER ORDERED that the parties’ joint requests that the settlement
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`agreement (Ex. 1047) be treated as business confidential information, kept separate
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`from the file of the involved patents, and made available only to Federal
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`6 A judgment means a final written decision by the Board, or a termination of a
`proceeding. 37 C.F.R. § 42.2.
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` 3
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`Cases IPR2014-00229, -230, -231
`Patents 6,131,121, 6,108,704, 6,009,464
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`Government agencies on written request, or to any person on a showing of good
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`cause under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), are
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`granted.
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` 4
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`Cases IPR2014-00229, -230, -231
`Patents 6,131,121, 6,108,704, 6,009,464
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`PETITIONERS:
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`Michael Rader
`Edmund Walsh
`Randy Pritzker
`WOKF GREENFIELD & SACKS, P.C.
`MRader-PTAB@wolfgreenfield.com
`EWalsh-PTAB@wolfgreenfield.com
`RPritzker-PTAB@wolfgreenfield.com
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`PATENT OWNER:
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`Patrick Lee
`Michelle Chatelain
`FISCH HOFFMAN SIGLER LLP
`patrick.lee@fischllp.com
`michelle.chatelain@fischllp.com
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