Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper 12
`Entered: May 2, 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.
`
`
`WHITE, Administrative Patent Judge.
`
`
`
`ORDER
`Motion to Terminate
`37 C.F.R. § 42.72
`
`
`
`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.
`
`
`Tel: 571-272-7822
`
`
`
`
`
`Paper 12
`Entered: May 2, 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.
`
`
`WHITE, Administrative Patent Judge.
`
`
`
`ORDER
`Motion to Terminate
`37 C.F.R. § 42.72
`
`
`
`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, the parties filed joint motions to terminate the trial in
`
`each of the instant proceedings under 35 U.S.C. § 317(a).2 Along with the
`
`motions, the parties filed copies of a document they describe as the written
`
`settlement agreement,3 as well as separate joint requests to treat the settlement
`
`agreement as business confidential information under the provisions of 35 U.S.C.
`
`§ 317(b) and 37 C.F.R. § 42.74(c).4 As the motions and exhibits in all three
`
`proceedings are substantially similar, we refer herein to the papers filed in
`
`IPR2014-00229 for convenience.
`
`The instant proceedings are in the preliminary stage. Patent Owner has filed
`
`preliminary responses in each of the instant proceedings.5 The Board, however,
`
`has not determined whether trial will be instituted for any of the requests for inter
`
`partes review.
`
`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 patent owner, unless the Office has decided the merits of the
`
`proceeding before the request for termination is filed.” In the motions to terminate,
`
`the parties state that they have settled their dispute with respect to the patents
`
`involved in the proceedings, and have reached agreement to terminate these
`
`proceedings. Paper 9, 1. Furthermore, the joint motion indicates that the parties
`
`have agreed to dismiss Petitioner and other real parties-in-interest identified by
`
`
`2 IPR2014-00229, Paper 9; IPR2014-00230, Paper 10, IPR2014-00231, Paper 9.
`
`3 IPR2014-00229, Ex. 1047; IPR2014-00230, Ex. 1047, IPR2014-00231, Ex.
`1047.
`
`4 IPR2014-00229, Paper 10; IPR2014-00230, Paper 11, IPR2014-00231, Paper 10.
`
`5 IPR2014-00229, Paper 7; IPR2014-00230, Paper 8; IPR2014-00231, Paper 7.
`
` 2
`
`
`
`
`
`
`
`Cases IPR2014-00229, -230, -231
`Patents 6,131,121, 6,108,704, 6,009,464
`
`Petitioner as respondents in Certain Point-to-Point Network Communication
`
`Devices and Products Containing Same, Inv. No. 337-TA-892 (U.S.I.T.C.) and
`
`Straight Path IP Group, Inc. v. Sony Corp., No. 1:13-cv-01071-AJT (E.D. Va.).
`
`Paper 9, 1-2. The parties argue that no other petitioner would remain in the instant
`
`proceedings, and that termination of these proceedings promotes judicial economy
`
`and furthers the policy of the Board. Id.
`
`The Board generally 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). Upon consideration of the parties’
`
`arguments and the early stage of these proceedings, we agree with the parties that
`
`terminating the instant proceedings with respect to both Petitioner and Patent
`
`Owner, at this early juncture, promotes efficiency and minimizes unnecessary
`
`costs. The Board is persuaded that, under these circumstances, it is appropriate to
`
`enter judgment6 without rendering a final written decision. See 35 U.S.C. § 317(a);
`
`37 C.F.R. § 42.72.
`
`Accordingly, it is:
`
`ORDERED that the joint motions to terminate these proceedings are
`
`granted, and that these proceedings are hereby terminated as to all parties,
`
`including Petitioner and Patent Owner;
`
`FURTHER ORDERED that the parties’ joint requests that the settlement
`
`agreement (Ex. 1047) be treated as business confidential information, kept separate
`
`from the file of the involved patents, and made available only to Federal
`
`
`6 A judgment means a final written decision by the Board, or a termination of a
`proceeding. 37 C.F.R. § 42.2.
`
` 3
`
`
`
`
`
`
`
`Cases IPR2014-00229, -230, -231
`Patents 6,131,121, 6,108,704, 6,009,464
`
`Government agencies on written request, or to any person on a showing of good
`
`cause under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), are
`
`granted.
`
`
`
`
`
`
`
` 4
`
`
`
`
`
`
`
`Cases IPR2014-00229, -230, -231
`Patents 6,131,121, 6,108,704, 6,009,464
`
`PETITIONERS:
`
`Michael Rader
`Edmund Walsh
`Randy Pritzker
`WOKF GREENFIELD & SACKS, P.C.
`MRader-PTAB@wolfgreenfield.com
`EWalsh-PTAB@wolfgreenfield.com
`RPritzker-PTAB@wolfgreenfield.com
`
`PATENT OWNER:
`
`Patrick Lee
`Michelle Chatelain
`FISCH HOFFMAN SIGLER LLP
`patrick.lee@fischllp.com
`michelle.chatelain@fischllp.com
`
`
`
` 5
`
`
`
`
`
`
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