`Entered: October 2, 2015
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`SAMSUNG ELECTRONICS LTD, and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`E-WATCH, INC.,
`Patent Owner.
`
`
`Case IPR2015-004141
`Patent 7,643,168 B2
`
`
`Before JAMESON LEE, GREGG I. ANDERSON, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`1 Case IPR2015-00611 has been joined to this proceeding.
`
`
`
`IPR2015-00414
`Patent 7,643,168 B2
`
`
`The parties sought authorization to file a joint motion to terminate
`
`this proceeding as to Petitioners, Samsung Electronics Ltd. and Samsung
`
`Electronics America, Inc. (collectively, “Samsung”), on the basis that those
`
`entities have settled with Patent Owner, e-Watch, Inc. (“e-Watch”).
`
`Samsung and e-Watch 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). We are advised that Petitioner Apple Inc. has no
`
`objection.
`
`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 filing of a joint motion to terminate this proceeding as to
`
`Samsung is authorized. The joint motion must specifically discuss the
`
`current status of related litigation between e-Watch, Inc., and Samsung,
`
`such as e-Watch, Inc. v. Samsung Electronics Co. Ltd. and Samsung
`
`Telecommunications America, Inc., 2:13-cv-01062 (E.D. Tex.), with respect
`
`to each party to that litigation.
`
`The joint motion to terminate as to Samsung 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 parties indicated that they
`
`intend to file a confidential true copy of the settlement agreement. The
`
`
`
`2
`
`
`
`IPR2015-00414
`Patent 7,643,168 B2
`
`
`parties must file the true copy of the 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.
`
`
`
`ORDER
`
`Accordingly, it is
`
`ORDERED that the parties are authorized to file a joint motion to
`
`terminate this proceeding as to Samsung on the basis that Patent Owner has
`
`settled with Samsung;
`
`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
`
`FURTHER ORDERED that the 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
`
`
`
`IPR2015-00414
`Patent 7,643,168 B2
`
`For PETITIONER:
`
`Brian Buroker
`BBuroker@gibsondunn.com
`
`Blair Silver
`bsilver@gibsondunn.com
`
`
`
`For PATENT OWNER:
`
`Robert C. Curfiss
`bob@curfiss.com
`
`Ryan Schultz
`rmschultz@rkmc.com
`
`Thomas DeSimone
`trdesimone@rkmc.com
`
`
`
`4
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
