`571-272-7822
`
`
`
`
`Paper 8
`
`Entered: April 28, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY CORPORATION
`Petitioner
`
`v.
`
`STRAIGHT PATH IP GROUP, INC.
`Patent Owner
`____________
`
`Case IPR2014-00229 (Patent 6,131,121)
`Case IPR2014-00230 (Patent 6,108,704)
`Case IPR2014-00231 (Patent 6,009,469)1
`
`
`
`Before BRYAN F. MOORE, MIRIAM L. QUINN, and
`STACEY G. WHITE, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`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.
`
`
`
`Cases IPR2014-00229, -230, -231
`Patents 6,131,121, 6,108,704, 6,009,464
`On April 28, 2014, a telephone conference call was held between
`respective counsel for the parties and Judges Quinn, Moore, and White. The
`parties sought authorization to file a joint motion to terminate the instant
`proceedings on the basis that the parties have reached a settlement.
`The petitions for inter partes review were filed on December 5, 2013.
`Patent owner preliminary responses were filed on March 21, 2014. The
`Board has not determined yet whether a trial will be instituted. Generally,
`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). The rule governing settlement
`indicates that any agreement between the parties made in connection with, or
`in contemplation of, the termination of a proceeding shall be in writing and
`filed with the Board. 37 C.F.R. § 42.74.
`Based on the facts of this case, the Board authorizes the parties to file
`a joint motion to terminate these proceedings. The joint motion must
`include a brief explanation as to why termination is appropriate. The joint
`motion to terminate also must be accompanied by a true copy of the parties’
`settlement agreement, as required by 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(b). A redacted version of the settlement agreement will not be
`accepted as a true copy of the settlement agreement.
`With respect to having the settlement agreement treated as business
`confidential information under 37 C.F.R. § 42.74(c), the parties must file the
`confidential settlement agreement electronically in the Patent Review
`Processing System (“PRPS”) as an exhibit in accordance with the
`instructions provided on the Board’s website (uploading as “Parties and
`Board Only”). The parties are directed to FAQ G2 on the Board’s website at
`
`
`
`Cases IPR2014-00229, -230, -231
`Patents 6,131,121, 6,108,704, 6,009,464
`http://www.uspto.gov/ip/boards/bpai/prps.jsp for instructions on how to file
`their settlement agreement as confidential.
`Accordingly, it is
`ORDERED that the parties are authorized to file a joint motion to
`terminate each of these proceedings; the due date for the joint motion is
`May 5, 2014;
`FURTHER ORDERED that each of the joint motions must be
`accompanied by a true copy of the parties’ settlement agreement in
`connection with the termination of these proceedings, as required by 35
`U.S.C. § 317(b) and 37 C.F.R. § 42.74(b);
`FURTHER ORDERED that the parties may file in each proceeding a
`separate paper requesting that the settlement agreement be treated as
`business confidential information as specified in 37 C.F.R. § 42.74(c); and
`FURTHER ORDERED that any confidential settlement agreement
`must be filed, as an exhibit, electronically in PRPS in accordance with the
`instructions provided on the Board’s website (uploading as “Parties and
`Board Only”).
`
`
`
`Cases IPR2014-00229, -230, -231
`Patents 6,131,121, 6,108,704, 6,009,464
`PETITIONERS:
`
`Michael Rader (Lead Counsel)
`Edmund Walsh (Back-up Counsel)
`Randy Pritzker (Back-up Counsel)
`WOKF GREENFIELD & SACKS, P.C.
`MRader-PTAB@wolfgreenfield.com
`EWalsh-PTAB@wolfgreenfield.com
`RPritzker-PTAB@wolfgreenfield.com
`
`
`PATENT OWNER:
`
`Patrick Lee (Lead Counsel)
`Michelle Chatelain (Back-up Counsel)
`FISCH HOFFMAN SIGLER LLP
`Patrick.lee@fischllp.com
`michelle.chatelain@fischllp.com
`
`
`
`
`
`