`Entered: November 12, 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
`Case IPR2015-00611
`Patent 7,643,168 B2
`
`
`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 Case IPR2015-00611 has been joined to this proceeding.
`
`
`
`IPR2015-00414
`Patent 7,643,168 B2
`
`
`On October 9, 2015, pursuant to our authorization (Paper 21), Petitioner
`Samsung Electronics Ltd. and Samsung Electronics America, Inc. (“Samsung”)
`and e-Watch, Inc. (“Patent Owner”) (collectively, “the parties”) filed a Joint
`Motion to Terminate (“Motion” or “Mot.,” Paper 22) with respect to Samsung
`only. Mot. 2. The parties have entered into a settlement agreement that
`resolves their disputes related to the challenged patent. Id. The parties filed a
`copy of the settlement agreement (Ex. 1012) along with a Joint Request to Treat
`the Settlement Agreement as Business Confidential Information. Paper 23; 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.”).
`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 the patent owner, unless the Office has decided
`the merits of the proceeding before the request for termination is filed.”
`Samsung is not the sole petitioner in these reviews, which remains pending as
`to Petitioner Apple Inc., who the parties represent does not oppose termination
`as to Samsung only. Mot. 2. No final written decision has been issued, and,
`apart from the instant motion, there are no outstanding motions in this
`proceeding.
`The Board acknowledges that the written settlement agreement appears
`to be a true copy. All terminated and pending district court actions, including
`a terminated action relating to Samsung, with respect to the patent, are listed
`in the Motion. Mot. 3–4. The status of all pending inter partes reviews
`involving U.S. Patent No. 7,643,168 B2 is also listed. Id. at 4.
`The parties argue termination is appropriate because § 317(a) provides
`the trial shall be terminated with respect to “any petitioner upon the joint
`2
`
`
`
`
`
`IPR2015-00414
`Patent 7,643,168 B2
`
`request of the petitioner and the patent owner, unless the Office has decided
`the merits of the proceeding before the request for termination is filed.” Mot.
`2–3. The parties also contend that strong public policy reasons favor
`settlement. Id. at 3.
`The Board determines that, in the circumstances of these cases, it is
`appropriate to terminate the review as to Samsung. 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 with respect to Samsung
`only is granted; and
`FURTHER ORDERED that the settlement agreement (Exhibit 1012) be
`treated as business confidential information and be kept separate from the
`files of the involved U.S. Patent No. 7,643,168 B2.
`
`
`
`3
`
`
`
`IPR2015-00414
`Patent 7,643,168 B2
`
`For PETITIONER:
`
`Samsung:
`
`Brian Buroker
`Blair Silver
`GIBSON, DUNN & CRUTCHER LLP
`BBuroker@gibsondunn.com
`bsilver@gibsondunn.com
`
`
`
`Apple, Inc.:
`
`Steven Park
`Naveen Modi
`Elizabeth Brann
`PAUL HASTINGS LLP
`stevenpark@paulhastings.com
`naveenmodi@paulhastings.com
`elizabethbrann@paulhastings.com
`
`
`
`
`
`For PATENT OWNER:
`
`Robert C. Curfiss
`E-WATCH INC.
`bob@curfiss.com
`
`David O. Simmons
`IVC PATENT AGENCY
`dsimmons1@sbcglobal.net
`
`
`
`4
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