`Trials@uspto.gov
`Entered: November 30, 2017
`Tel: 571.272.7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CANON INC., CANON U.S.A., INC.,
`CANON FINANCIAL SERVICES, INC., FUJIFILM CORPORATION,
`FUJIFILM HOLDINGS AMERICA CORPORATION,
`FUJIFILM NORTH AMERICA CORPORATION, JVC KENWOOD
`CORPORATION, JVC KENWOOD USA CORPORATION,
`NIKON CORPORATION, NIKON INC., OLYMPUS CORPORATION,
`OLYMPUS AMERICA INC., PANASONIC CORPORATION,
`PANASONIC CORPORATION OF NORTH AMERICA,
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and
`LG ELECTRONICS INC.,
`Petitioner,
`v.
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`____________
`
`Case IPR2016-012251
`Patent 8,966,144 B2
`____________
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`DECISION
`Granting Joint Motion to Terminate as to LG Electronics, Inc.
`37 C.F.R. § 42.74
`
`
`1 Case IPR2017-00672, filed by LG Electronics, Inc., was joined with this
`proceeding on May 24, 2017. IPR2017-00672, Paper 9.
`
`
`
`IPR2016-01225
`Patent 8,966,144 B2
`
`
`Joint Petitioner, LG Electronics, Inc. (“LG”), and Patent Owner, Papst
`Licensing GmbH & Co. KG (“Papst”), jointly move to terminate the instant
`inter partes review with respect to LG in light of the settlement between
`Papst and LG that resolves their dispute regarding U.S. Patent No. 8,966,144
`B2 (“the ’144 patent”). Paper 32 (“Mot.”). LG and Papst also filed a true
`copy of their written settlement agreement in connection with the
`termination as required by 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b).
`Ex. 2012. Pursuant to 37 C.F.R. § 42.74(c), the parties further filed a joint
`request to treat the Settlement Agreement as business confidential
`information kept separate from the file of the involved patent. Paper 33.
`For the reasons set forth below, the Joint Motion to Terminate with
`respect to LG, and the Joint Request to File Settlement Agreement as
`Business Confidential Information are granted.
`Under the Leahy-Smith America Invents Act Pub. L. No. 112-29,
`125 Stat. 284 (September 16, 2011), settlement between the parties to a
`proceeding is encouraged. Notably, 35 U.S.C. § 317(a), in part, provides the
`following (emphasis added):
`(a) IN GENERAL.—An 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. If the inter partes review is
`terminated with respect to a petitioner under this section, no
`estoppel under section 315(e) shall attach to the petitioner, or to
`the real party in interest or privy of the petitioner, on the basis of
`that petitioner’s institution of that inter partes review.
`Here, although the instant inter partes review has been instituted, we
`have not entered a final written decision in this proceeding. Upon review of
`the procedural posture of this proceeding and the facts before us, we
`
`2
`
`
`
`IPR2016-01225
`Patent 8,966,144 B2
`
`determine that the parties’ contentions have merit, and that it is appropriate
`to terminate this proceeding with respect to LG. The proceeding, however,
`will not be terminated with respect to Papst and as to other Petitioners
`remaining in the proceeding.
`In consideration of the foregoing, it is hereby:
`ORDERED that the Joint Motion to Terminate, with respect to LG, is
`granted;
`FURTHER ORDERED that this review is terminated with respect to
`LG only; but this review continues to proceed with Papst and the remaining
`Petitioners;
`FURTHER ORDERED that the Joint Request to File Settlement
`Agreement as Business Confidential Information and to keep such
`settlement agreement separate from the patent file, and to make it available
`only to Federal Government agencies on written request, or to any person on
`a showing of good cause, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(c), is granted; and
`FURTHER ORDERED that any subsequent papers filed in this inter
`partes review should not include LG as a Petitioner.
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2016-01225
`Patent 8,966,144 B2
`
`PETITIONER:
`
`David M. Maiorana
`F. Drexel Feeling
`Matthew W. Johnson
`David L. Witcoff
`Marc S. Blackman
`JONES DAY
`dmaiorana@jonesday.com
`f.dfeeling@jonesday.com
`mwjohnson@jonesday.com
`dlwitcoff@jonesday.com
`msblackman@jonesday.com
`
`Gregory S. Cordrey
`JEFFER MANGELS BUTLER & MITCHELL, LLP
`gcordrey@jmbm.com
`
`T. Vann Pearce, Jr.
`Christopher J. Higgins
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`TVPPTABDocket@orrick.com
`chiggins@orrick.com
`
`Dion Bregman
`Ahren Hsu-Hoffman
`Chris Mizumoto
`MORGAN, LEWIS & BOCKIUS LLP
`dion.bregman@morganlewis.com
`Ahren.hsu-hoffman@morganlewis.com
`chris.mizumoto@morganlewis.com
`
`Brian C. Rupp
`Carrie A. Beyer
`Nikola Colic
`DRINKER BIDDLE & REATH LLP
`Brian.Rupp@dbr.com
`Carrie.Beyer@dbr.com
`Nick.Colic@dbr.com
`
`4
`
`
`
`IPR2016-01225
`Patent 8,966,144 B2
`
`David Garr
`Greg Discher
`COVINGTON & BURLING LLP
`dgarr@cov.com
`gdischer@cov.com
`
`
`PATENT OWNER:
`
`Nicholas T. Peters
`Paul Henkelmann
`FITCH, EVEN, TABIN & FLANNERY LLP
`ntpete@fitcheven.com
`phenkelmann@fitcheven.com
`
`Anthony L. Meola
`THE MEOLA FIRM, PLLC
`ameola@themeolafirm.com
`
`
`
`
`
`5
`
`