`Entered: October 2, 2015
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`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`SAMSUNG ELECTRONICS LTD, and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
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`v.
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`E-WATCH, INC.,
`Patent Owner.
`
`
`Case IPR2015-004141
`Patent 7,643,168 B2
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`Before JAMESON LEE, GREGG I. ANDERSON, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
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`ANDERSON, Administrative Patent Judge.
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`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
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`1 Case IPR2015-00611 has been joined to this proceeding.
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`IPR2015-00414
`Patent 7,643,168 B2
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`The parties sought authorization to file a joint motion to terminate
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`this proceeding as to Petitioners, Samsung Electronics Ltd. and Samsung
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`Electronics America, Inc. (collectively, “Samsung”), on the basis that those
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`entities have settled with Patent Owner, e-Watch, Inc. (“e-Watch”).
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`Samsung and e-Watch also sought authorization to file a request to have the
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`settlement agreement be treated as business confidential information under
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`37 C.F.R. § 42.74(c). We are advised that Petitioner Apple Inc. has no
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`objection.
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`Generally, the Board expects that a proceeding will terminate after the
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`filing of a settlement agreement. See, e.g., Office Patent Trial Practice
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`Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Any agreement or
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`understanding between the parties made in connection with, or in
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`contemplation of, the termination of a proceeding shall be in writing, and a
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`true copy of the agreement shall be filed with the Board prior to termination.
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`37 C.F.R. § 42.74(b).
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`The filing of a joint motion to terminate this proceeding as to
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`Samsung is authorized. The joint motion must specifically discuss the
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`current status of related litigation between e-Watch, Inc., and Samsung,
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`such as e-Watch, Inc. v. Samsung Electronics Co. Ltd. and Samsung
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`Telecommunications America, Inc., 2:13-cv-01062 (E.D. Tex.), with respect
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`to each party to that litigation.
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`The joint motion to terminate as to Samsung must be accompanied by
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`a true copy of the settlement agreement in connection with the termination
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`of that proceeding, as required by 35 U.S.C. § 317(b) and 37 C.F.R. §
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`42.74(b). A redacted version of the settlement agreement is not a true copy
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`of the settlement agreement. Counsel for the parties indicated that they
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`intend to file a confidential true copy of the settlement agreement. The
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`2
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`IPR2015-00414
`Patent 7,643,168 B2
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`parties must file the true copy of the settlement agreement electronically via
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`the Patent Review Processing System (PRPS) in accordance with the
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`instructions provided on the Board’s website (uploading as “Parties and
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`Board Only”). The parties are directed to FAQ G2 on the Board’s website
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`page at http://www.uspto.gov/ip/boards/bpai/prps.jsp for instructions on how
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`to file their settlement agreement as confidential.
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`ORDER
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`Accordingly, it is
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`ORDERED that the parties are authorized to file a joint motion to
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`terminate this proceeding as to Samsung on the basis that Patent Owner has
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`settled with Samsung;
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`FURTHER ORDERED that the joint motion must be accompanied by
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`a true copy, labeled as an exhibit, of the settlement agreement as required by
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`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b);
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`FURTHER ORDERED that in the joint motion the parties may
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`request that the settlement agreement be treated as business confidential and
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`kept separate from the underlying patent file, as provided in 37 C.F.R.
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`§ 42.74(c); and
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`FURTHER ORDERED that the confidential settlement agreement
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`must be filed electronically via PRPS in accordance with the instructions
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`provided on the Board’s website (uploading as “Parties and Board Only”).
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`3
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`IPR2015-00414
`Patent 7,643,168 B2
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`For PETITIONER:
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`Brian Buroker
`BBuroker@gibsondunn.com
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`Blair Silver
`bsilver@gibsondunn.com
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`For PATENT OWNER:
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`Robert C. Curfiss
`bob@curfiss.com
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`Ryan Schultz
`rmschultz@rkmc.com
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`Thomas DeSimone
`trdesimone@rkmc.com
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`4