Trials@uspto.gov
`571-272-7822
`
`
`Paper 10
`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 7,643,168)
`____________
`
`Before JAMESON LEE, GREGG I. ANDERSON and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`
`DECISION
`Joint Motion to Terminate
`37 C.F.R. § 42.72
`
`
`
`
`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.
`
`

`

`IPR2015-00404 (Patent 7,365,871)
`IPR2015-00408 (Patent 7,643,168)
`
`
`On January 23, 2015, Microsoft Mobile OY, Microsoft Corporation,
`
`Nokia Inc. (collectively, the “Microsoft/Nokia entities”) and e-Watch, Inc.
`
`(“Patent Owner”) filed a joint motion to terminate the trial proceedings as to
`
`a subset of Petitioner, i.e., Microsoft/Nokia entities, under 35 U.S.C.
`
`§ 317(a). Paper 7.2 Along with the motion, the Microsoft/Nokia entities and
`
`Patent Owner filed a Joint Request to Treat Settlement Agreement as
`
`Business Confidential Information Under 35 U.S.C. § 317 and 37 C.F.R.
`
`§ 42.74(c) (Paper 8), and filed copy of a document they described as the
`
`written settlement agreement (Exhibit 2001).
`
`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.” The
`
`parties state in their Joint Motion to Terminate that:
`
`Termination of this proceeding as to the Microsoft/Nokia
`parties is appropriate, as the Parties have agreed to settle their
`dispute. Moreover, this review is in its early stages. MMO
`jointly filed a petition with LG Electronics, Inc. (“LGE”) for
`IPR on December 10, 2014, which included the designation of
`the Microsoft/Nokia parties as real parties in interest. e-Watch
`has yet to file a Preliminary Patent Owner Response and the
`IPR has yet to be instituted. As a result, e-Watch has not filed
`any substantive papers or declarations.
`
`Paper 7, 2. In addition, the other real parties-in-interest identified as
`
`Petitioner did not object to the requested termination. Because we have not
`
`yet decided the merits of the proceeding, it is appropriate to terminate this
`
`proceeding with respect to the Microsoft/Nokia entities. 37 C.F.R. § 42.72.
`
`
`2 Citations are to IPR2015-00404 unless otherwise noted. Equivalent papers
`were filed in IPR2015-00408.
`
`

`

`IPR2015-00404 (Patent 7,365,871)
`IPR2015-00408 (Patent 7,643,168)
`
`
`ORDER
`
`Accordingly, it is:
`
`ORDERED that the joint motion to terminate the involvement of
`
`Microsoft Mobile OY, Microsoft Corporation, and Nokia Inc. is granted;
`
`and
`
`FURTHER ORDERED that the joint request that the settlement
`
`agreement (Exhibit 2001) be treated as business confidential information,
`
`kept separate from the file of the involved patent, and made available only to
`
`Federal 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), is granted.
`
`
`
`

`

`IPR2015-00404 (Patent 7,365,871)
`IPR2015-00408 (Patent 7,643,168)
`
`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
`
`
`