`Trials@uspto.gov Paper No. 10
`Date Entered: January 15, 2016
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`SAINT LAWRENCE COMMUNICATIONS LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01874
`Patent 7,151,802 B1
`____________
`
`
`Before MICHAEL P. TIERNEY, RAMA G. ELLURU, and
`SCOTT C. MOORE, Administrative Patent Judges.
`
`ELLURU, Administrative Patent Judge.
`
`DECISION
`Joint Motion to Terminate the Inter Partes Review
`35 U.S.C. § 317 and 37 C.F.R. § 42.72
`
`
`
`
`
`IPR2015-01874
`Patent 7,151,802 B1
`
`
`
`
`I. Introduction
`
`
`
`
`
`On January 8, 2016, Petitioner, LG Electronics, Inc. (“LG”), and
`
`Patent Owner, Saint Lawrence Communications LLC (“Saint Lawrence”)
`
`(collectively referred to as “the parties”), filed a “Joint Motion to Terminate”
`
`this inter partes review proceeding. Paper 7 (“Mot.”).1 Along with the Joint
`
`Motion to Terminate, the parties filed a true copy of their written settlement
`
`agreement and license agreement (Ex. 2002), as well as a joint request to
`
`have their settlement agreement treated as business confidential information
`
`under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (Paper 8). The parties
`
`also represent that they “have agreed to settle and jointly moved to dismiss
`
`with prejudice their related district court litigations concerning both U.S.
`
`patent 7,151,802 and U.S. Patent 7,260,5212.” Mot. 2.
`
`II. Discussion
`
`
`
`The parties are reminded that the Board is not a party to the
`
`settlement, and may identify independently any question of patentability.
`
`37 C.F.R. § 42.74(a). Generally, however, 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). 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
`
`
`1 Filing of the Motion to Terminate was authorized in e-mail correspondence
`from Board personnel on January 5, 2016.
`2 U.S. Patent No. 7,260,521 is the subject of IPR2015-01875, in which a
`separate Joint Motion to Terminate has been filed.
`
`
`
`
`
`IPR2015-01874
`Patent 7,151,802 B1
`
`
`filed.” Although we have not yet issued an institution decision, the
`
`
`
`considerations here are similar. We have not decided the merits of this
`
`proceeding. Thus, the requirement for terminating review of this inter
`
`partes review with respect to LG is met.
`
`
`
`Furthermore, under 35 U.S.C. § 317(a), “[i]f no petitioner remains in
`
`the inter partes review, the Office may terminate the review or proceed to a
`
`final written decision under section 318(a).” Thus, we also have discretion
`
`to terminate this review with respect to Saint Lawrence. In the Joint Motion
`
`to Terminate, the parties represent the following:
`
`Because the merits of any of the IPRs have not been
`
`determined, concluding these IPR proceedings promotes the
`Congressional goal to establish a more efficient and streamlined
`inter alia,
`patent system
`that,
`limits unnecessary and
`counterproductive litigation costs. See “Changes to Implement
`Inter Partes Review Proceedings, Post-Grant Review
`Proceedings, and Transitional Program for Covered Business
`Method Patents,” Final Rule, 77 Fed. Reg., no. 157, p. 48680
`(Tuesday, August 14, 2012). By permitting termination of IPR
`proceedings as to the parties upon settlement, the PTAB
`provides certainty as to the outcome of these proceedings.
`Terminating IPRs upon settlement fosters an environment that
`promotes settlements, thereby creating a timely, cost-effective
`alternative to litigation. Should the Board decide to continue
`the present proceedings, the Congressional goal of speedy
`dispute resolutions will be chilled.
`
`Mot. 2–3.
`
`
`
`Upon consideration of the circumstances of this case, the panel has
`
`determined to terminate this inter partes review as to both LG and Saint
`
`Lawrence without rendering a final written decision.
`
`2
`
`
`
`
`IPR2015-01874
`Patent 7,151,802 B1
`
`
`
`III. Order
`
`
`
`
`
`
`
`It is
`
`ORDERED that the Joint Motion to Terminate the inter partes review
`
`in IPR2015-1874 (Paper 7) is granted, and this proceeding is hereby
`
`terminated; and
`
`
`
`FURTHER ORDERED that, as was requested timely by the parties
`
`(Paper 8), the settlement agreement and license agreement (Exhibit 2002)
`
`will be treated as business confidential information under 35 U.S.C. § 317(b)
`
`and 37 C.F.R. § 42.74(c).
`
`
`
`
`
`
`
`
`
`3
`
`
`
`
`
`
`
`
`IPR2015-01874
`Patent 7,151,802 B1
`
`
`
`For PETITIONER:
`
`Robert Pluta
`Baldine Paul
`Amanda Streff
`MAYER BROWN LLP
`rpluta@mayerbrown.com
`bpaul@mayerbrown.com
`astreff@mayerbrown.com
`
`For PATENT OWNER:
`
`Gregory Gonsalves
`gonsalves@gonsalveslawfirm.com
`
`
`
`4
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