`571-272-7822
`
`
`
`
`
`Paper 9
`Entered: January 28, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC, LG ELECTRONICS U.S.A., INC.,
`LG ELECTRONICS MOBILECOMM U.S.A., INC,
`MICROSOFT MOBILE OY, MICROSOFT CORPORATION,
`NOKIA INC, SONY CORPORATION,
`SONY MOBILE COMMUNICATIONS (USA) INC.,
`SONY MOBILE COMMUNICATIONS AB,
`SONY MOBILE COMMUNICATIONS INC.,
`SHARP CORPORATION,
`and SHARP ELECTRONICS CORPORATION,
`Petitioner,
`
`v.
`
`E-WATCH, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00404 (Patent 7,365,871)1
`Case IPR2015-00408 (Patent 7,643,871)
`____________
`
`Before GREGG I. ANDERSON and MATTHEW R. CLEMENTS,
`Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`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.
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 9
`Entered: January 28, 2015
`
`
`
`On January 23, 2015, a telephone conference call was held between
`
`respective counsel for the parties, and Judges Anderson and Clements. The
`
`parties sought authorization to file a joint motion to terminate this
`
`proceeding as to Microsoft Mobile OY and Nokia Inc., on the basis that
`
`those entities have settled with Patent Owner. The parties also sought
`
`authorization to file a request to have the settlement agreement be treated as
`
`business confidential information under 37 C.F.R. § 42.74(c).
`
`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). Any agreement or
`
`understanding between the parties made in connection with, or in
`
`contemplation of, the termination of a proceeding shall be in writing, and a
`
`true copy of the agreement shall be filed with the Board prior to termination.
`
`37 C.F.R. § 42.74(b).
`
`The Board indicated that filing of a joint motion to terminate this
`
`proceeding as to Microsoft Mobile OY and Nokia Inc. is authorized. The
`
`joint motion must specifically discuss the current status of related litigation
`
`between e-Watch, Inc., and Microsoft Mobile OY or Nokia Inc., such as e-
`
`Watch, Inc. v. Nokia, Inc., 2:13-cv-01075 (E.D. Tex.), with respect to each
`
`party to that litigation.
`
`The joint motion to terminate as to Microsoft Mobile OY and Nokia
`
`Inc. must be accompanied by a true copy of the settlement agreement in
`
`connection with the termination of that proceeding, as required by 35 U.S.C.
`
`§ 317(b) and 37 C.F.R. § 42.74(b). A redacted version of the settlement
`
`agreement is not a true copy of the settlement agreement. Counsel for the
`
`
`
`
`1
`
`
`
`IPR2015-00404 (Patent 7,365,871)
`IPR2015-00408 (Patent 7,643,871)
`
`
`parties indicated that they intend to file a confidential true copy of the
`
`
`
`settlement agreement.
`
`With regard to having the true copy of the settlement agreement
`
`treated as business confidential information and kept separate from the
`
`patent file(s) under 37 C.F.R. § 42.74(c), the parties must file the true copy
`
`of the confidential settlement agreement electronically via the Patent Review
`
`Processing System (PRPS) 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 page at
`
`http://www.uspto.gov/ip/boards/bpai/prps.jsp for instructions on how to file
`
`their settlement agreement as confidential.
`
`
`
`Accordingly, it is:
`
`ORDER
`
`ORDERED that the parties are authorized to file a joint motion to
`
`terminate this proceeding as to Microsoft Mobile OY and Nokia Inc. on the
`
`basis that Patent Owner has settled with Microsoft Mobile OY and Nokia
`
`Inc.;
`
`FURTHER ORDERED that the joint motion must be accompanied by
`
`a true copy, labeled as an exhibit, of the settlement agreement as required by
`
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b);
`
`FURTHER ORDERED that in the joint motion the parties may
`
`request that the settlement agreement be treated as business confidential and
`
`kept separate from the underlying patent file, as provided in 37 C.F.R.
`
`§ 42.74(c); and
`
`
`
`2
`
`
`
`IPR2015-00404 (Patent 7,365,871)
`IPR2015-00408 (Patent 7,643,871)
`
`
`
`
`
`FURTHER ORDERED that any confidential settlement agreement
`
`must be filed electronically via PRPS in accordance with the instructions
`
`provided on the Board’s website (uploading as “Parties and Board Only”).
`
`
`
`
`
`3
`
`
`
`IPR2015-00404 (Patent 7,365,871)
`IPR2015-00408 (Patent 7,643,871)
`
`
`For PETITIONER:
`
`
`
`
`Timothy Riffe
`Brian Livedalen
`FISH & RICHARDSON P.C.
`riffe@fr.com
`IPR18768-0065IP1@fr.com
`
`
`
`For PATENT OWNER:
`
`Robert C. Curfiss
`bob@curfiss.com
`
`Ryan Schultz
`rmschultz@rkmc.com
`
`Thomas DeSimone
`trdesimone@rkmc.com
`
`
`
`
`
`
`4
`
`
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