`571-272-7822
`
`
` Paper No. 13
`Entered: November 6, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY CORPORATION,
`Petitioner,
`
`v.
`
`UCHICAGO ARGONNE, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01520 (Patent 6,677,082 B2)
`Case IPR2015-01521 (Patent 6,680,143 B2)1
`____________
`
`
`
`Before GRACE KARAFFA OBERMANN, JO-ANNE M. KOKOSKI, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`ANKENBRAND, Administrative Patent Judge.
`
`
`ORDER
`Dismissing the Petition Pursuant to Settlement
`37 C.F.R. §§ 42.71(a), 42.74
`
`
`
`
`1 This Order addresses issues common to both cases; therefore, we issue a
`single order to be entered in each case. The parties are authorized to use this
`style heading when filing an identical paper in both proceedings, provided
`that such heading includes a footnote attesting that “the word-for-word
`identical paper is filed in each proceeding identified in the heading.”
`
`
`
`
`
`IPR2015-01520 (Patent 6,677,082 B2)
`IPR2015-01521 (Patent 6,680,143 B2)
`
`
`
`On November 4, 2015, pursuant to Board authorization, Petitioner and
`
`Patent Owner filed a joint motion to terminate each proceeding identified in
`
`the caption under 35 U.S.C. § 317(a). Paper 9.2 Along with the motion, the
`
`parties filed a copy of a document they describe as their written settlement
`
`agreement (Paper 9, 1; Ex. 1031), as well as a separate joint request to treat
`
`the settlement agreement as business confidential information. Paper 10; see
`
`37 C.F.R. § 42.74(c) (a party to a settlement may request that the settlement
`
`agreement be treated as business confidential and be kept separate from the
`
`patent file).
`
`
`
`The cases are in a preliminary stage. The Board has not yet issued
`
`decisions on whether to institute the proceedings. The parties state in the
`
`joint motion that they have settled their dispute and have reached agreement
`
`to terminate these inter partes reviews, as well as related ITC and district
`
`court litigation. Paper 9, 1–3. We are persuaded that, under these
`
`circumstances, it is appropriate to dismiss the Petition in each proceeding.
`
`37 C.F.R. § 42.71(a). This Order does not constitute a final written decision
`
`pursuant to 35 U.S.C. § 318(a).
`
`
`
`
`
`It is therefore
`
`ORDERED that the joint motion is granted and the Petition is
`
`dismissed in each proceeding; and
`
`
`2 The parties filed substantially similar papers and exhibits in each
`proceeding. Citations are to IPR2015-01520 as representative unless
`otherwise indicated.
`
`
`
`2
`
`
`
`IPR2015-01520 (Patent 6,677,082 B2)
`IPR2015-01521 (Patent 6,680,143 B2)
`
`
`
`FURTHER ORDERED that the joint request that the settlement
`
`agreement be treated as business confidential information, to be kept
`
`separate from the patent file, is granted in each proceeding.
`
`
`
`
`
`3
`
`
`
`IPR2015-01520 (Patent 6,677,082 B2)
`IPR2015-01521 (Patent 6,680,143 B2)
`
`
`
`FOR PETITIONER:
`
`Lionel M. Lavenue
`Maximilienne Giannelli
`Joshua L. Goldberg
`Hojung Cho
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`lionel.lavenue@finnegan.com
`maximilienne.giannelli@finnegan.com
`joshua.goldberg@finnegan.com
`hojung.cho@finnegan.com
`
`
`FOR PATENT OWNER:
`
`
`Brian E. Ferguson
`Anish R. Desai
`Weil, Gotshal & Manges LLP
`brian.ferguson@weil.com
`anish.desai@weil.com
`
`
`
`
`4
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