`571-272-7822
`
`
`
`
`
`
`Paper 9
`Entered: December 8, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY CORPORATION OF AMERICA,
`Petitioner,
`
`v.
`
`CHEN-JEAN CHOU,
`Patent Owner.
`____________
`
`Case IPR2014-01268
`Patent 7,612,843 B2
`
`
`Before JUSTIN T. ARBES, BRYAN F. MOORE, and
`PATRICK R. SCANLON, Administrative Patent Judges.
`
`SCANLON, Administrative Patent Judge.
`
`JUDGMENT
`Termination of Proceeding
`37 C.F.R. § 42.72
`
`
`
`IPR2014-01268
`Patent 7,612,843 B2
`
`
`
`On November 18, 2014, the parties filed a Joint Motion to Terminate
`Proceeding Pursuant to 35 U.S.C. § 317 (Paper 6) and a Joint Request to File
`Settlement Agreement as Business Confidential Information under 35 U.S.C.
`§ 317 (Paper 7). The Joint Motion to Terminate Proceeding is accompanied
`by a copy of a settlement agreement styled “Term Sheet” and filed as Exhibit
`1010. The parties represent that the Term Sheet is a true and correct copy of
`their agreement. Paper 6, 2. The Board retroactively authorized the filing of
`these papers via e-mail on November 21, 2014.
`The Board authorized, via e-mail, the parties to file a license agreement,
`which the parties were contemplating executing, on November 28, 2014. On
`December 2, 2014, the parties filed a copy of their Confidential Settlement
`and License Agreement (Ex. 1011) and a Joint Request to File Settlement
`Agreement as Business Confidential Information under 35 U.S.C. § 317
`(Paper 8).
`The instant proceeding is still in the preliminary proceeding stage.
`Patent Owner has not yet filed a preliminary response, and we have not yet
`determined whether to institute an inter partes review. The parties indicate
`that they have settled their dispute and have reached agreement to terminate
`this inter partes review. Paper 6, 1–2. We have reviewed Exhibits 1010 and
`1011 and determine that, under the present circumstances, it is appropriate to
`enter judgment1 and terminate the proceeding without rendering a final written
`decision under 37 C.F.R. § 42.72.
`
`
`
`1 A judgment means a final written decision by the Board, or a termination of
`a proceeding. 37 C.F.R. § 42.2.
`
`
`
`2
`
`
`
`IPR2014-01268
`Patent 7,612,843 B2
`
`
`
`In consideration of the foregoing, it is hereby:
`ORDERED that the joint motion to terminate the proceeding is granted;
`FURTHER ORDERED that the proceeding is terminated; and
`FURTHER ORDERED the joint requests that the Term Sheet (Ex.
`1010) and the Confidential Settlement and License Agreement (Ex. 1011) be
`treated as business confidential information and be kept separate from the file
`of the involved patent pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(c) are granted.
`
`
`
`
`3
`
`
`
`IPR2014-01268
`Patent 7,612,843 B2
`
`
`PETITIONERS:
`
`Lewis Popovski
`Paul Qualey
`KENYON & KENYON LLP
`lpopovski@kenyon.com
`pqualey@kenyon.com
`
`PATENT OWNER:
`
`Mark W. Handley
`HANDLEY LAW FIRM, PLLC
`docket@iplaw.pro
`
`
`
`
`
`
`4
`
`
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