Trials@uspto.gov
`571-272-7822
`
`Paper 15
`Entered August 19, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`SONY MOBILE COMMUNICATIONS (USA), INC.,
`Petitioner,
`
`
`
`v.
`
`E-WATCH, INC.,
`Patent Owner.
`
`
`
`Case IPR2015-00401 (Patent 7,643,168 B2)
`Case IPR2015-00402 (Patent 7,365,871 B2)1
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Before JAMESON LEE, GREGG I. ANDERSON, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`
`DECISION
`Joint Motion to Terminate
`37 C.F.R. §§ 42.5(a), 42.71(a)
`
`
`1 This order addresses issues that are the same in all cases. We exercise our
`discretion to issue one order to be filed in each case. The parties, however,
`are not authorized to use this style heading in subsequent papers.
`
`

`
`IPR2015-00401, Patent 7,643,168
`IPR2015-00402, Patent 7,365,871
`
`
`On August 17, 2015, Sony Mobile Communications (USA) Inc.
`(“Petitioner”) and e-Watch, Inc. (“Patent Owner”) filed a Joint Motion to
`Terminate (“Motion to Terminate”) based on a settlement agreement that
`resolves the parties’ disputes related to the challenged patents. Paper 20.2
`The parties filed a copy of the settlement agreement (IPR2015-00401, Ex.
`1029; IPR2015-00402, Ex. 1027) along with a Joint Motion to Seal (“Motion
`to Seal”). Paper 19; see also 37 C.F.R. § 42.74(c) (“A party to a settlement
`may request that the settlement be treated as business confidential information
`and be kept separate from the files of an involved patent or application.”).
`The parties should have filed a “Request to keep separate” under 37 C.F.R. §
`42.74(c). A “motion to seal” is not the same as what is provided under the
`rules. To the extent that the parties request that the settlement agreement be
`treated as business confidential information and be kept separate from the
`files of the involved U.S. Patent Nos. 7,643,168 B2 and 7,365,871 B2 under
`Rule 42.74(c), that is granted. Otherwise, the Joint Motion to Seal is denied.
`Under 35 U.S.C. § 317(a), “[i]f no petitioner remains in the inter
`partes review, the Office may terminate the review or proceed to a final
`written decision under section 318(a).” Petitioner is the sole petitioner in
`these reviews. The Board has discretion to terminate these reviews with
`respect to the Patent Owner. No final written decision has been issued, and,
`
`
`2 The Motion to Terminate and Motion to Seal are virtually the same in
`IPR2015-00401 and IPR2015-00402. Accordingly, all citations are to
`IPR2015-00401 unless otherwise noted. Patent Owner advises us that a prior
`motion to terminate (Paper 17) contained typographical and formatting errors
`and, with the permission of Petitioner, requests it be expunged. Also, a
`second copy of the erroneously filed Joint Motion to Terminate was filed as
`Paper 18, which appears in PRPS as a “Joint Motion to Seal.” Papers 17 and
`18 will be expunged.
`
`

`
`IPR2015-00401, Patent 7,643,168
`IPR2015-00402, Patent 7,365,871
`
`apart from the instant motions, there are no outstanding motions in these
`proceedings.
`The Board acknowledges that the written settlement agreements appear
`to be true copies, and that the parties seek settlement of the district court
`actions between the parties. All terminated and pending district court actions
`with respect to the patents are listed in the Motion to Terminate. Motion to
`Terminate, 4–5. The parties also request that we terminate these proceedings
`with respect to Patent Owner as well. Id. at 5.
`The parties argue termination is appropriate because the proceeding is
`still at an early stage, with Patent Owner’s Response not due until September
`21, 2015. Id. at 2–3. The parties also contend that strong public policy
`reasons favor settlement and that no public interest factors mitigate against
`settlement as to both parties. Id. at 3.
`The Board determines that, in the circumstances of these cases, it is
`appropriate to terminate the reviews both as to Petitioner and Patent Owner
`without rendering final written decisions. See 35 U.S.C. § 317(a); 37 C.F.R.
`§ 42.72. This paper does not constitute a final written decision pursuant to 35
`U.S.C. § 318(a).
`
`ORDER
`
`Accordingly, it is
`ORDERED that the Joint Motion to Terminate is granted;
`ORDERED that Papers 17 and 18 are expunged; and
`FURTHER ORDERED that the settlement agreement (IPR2015-00401,
`Exhibit 1029; IPR2015-00402, Exhibit 1027) be treated as business
`confidential information and be kept separate from the files of the involved
`U.S. Patent Nos. 7,643,168 B2 and 7,365,871 B2.
`
`

`
`IPR2015-00401, Patent 7,643,168
`IPR2015-00402, Patent 7,365,871
`
`For PETITIONER:
`James V. Mahon
`L. Scott Bloebaum
`ANDREWS KURTH LLP
`jamesmahon@andrewskurth.com
`scottbloebaum@andrewskurth.com
`
`
`
`For PATENT OWNER:
`
`Robert C. Curfiss
`bob@curfiss.com
`
`David O. Simmons
`IVC Patent Agency
`dsimmons1@sbcglobal.net