`Tel: 571.272.7822
`
`Paper 26
`Entered: July 8, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLEINC., NEST LABS, INC., and DROPCAM,INC.,
`Petitioner,
`
`Vv.
`
`E. DIGITAL CORPORATION,
`Patent Owner.
`
`Case IPR2015-01470 (Patent 8,311,522)
`Case IPR2015-01471 (Patent 8,315,618)
`Case IPR2015-01472 (Patent 8,306,514)
`Case IPR2015-01473 (Patent 8,311,523)
`Case IPR2015-01474 (Patent 8,311,524)
`Case IPR2015-01475 (Patent 8,315,619)!
`
`Before KEVIN F. TURNER, HYUN J. JUNG, and BARBARA A. PARVIS,
`Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`DECISION
`Joint Motion to Terminate Pursuant to Settlement
`35 U.S.C. § 317(a) and 37 C_F-R. §$ 42.72-42.74
`
`' This Decision addresses the same issue in these six inter partes reviews.
`Weexercise our discretion to issue one Orderto be docketed in each case.
`The parties, however, are not authorizedto usethis style offiling in
`subsequent papers, without prior authorization.
`
`
`
`IPR2015-01470 through IPR2015-01475
`
`On June 29, 2016, and pursuant to 35 U.S.C. § 317(a),the parties filed
`
`a joint motion to terminate in each of the above cited proceedings.
`
`IPR2015-01470, Paper 24; IPR2015-01471, Paper 23; IPR2015-01472,
`
`Paper 23; IPR2015-01473, Paper 23; IPR2015-01474, Paper 23; IPR2015-
`
`01475, Paper 23. Along with each joint motion,the parties filed a
`
`Settlement Agreement. IPR2015-01470, Ex. 1025; IPR2015-01471, Ex.
`
`1025; IPR2015-01472, Ex. 1025; IPR2015-01473, Ex. 1025; IPR2015-
`
`01474, Ex. 1025; IPR2015-01475, Ex. 1025. Theparties also filed in each
`
`case a joint request that the settlement agreementbe treated as business
`
`confidential information pursuant to 35 U.S.C. § 317(b) and 37
`
`C.F.R. § 42.74(c). IPR2015-01470, Paper 25; IPR2015-01471, Paper 24;
`
`IPR2015-01472, Paper 24; IPR2015-01473, Paper 24; IPR2015-01474,
`
`Paper 24; IPR2015-01475, Paper 24. We authorized the abovefilings on
`
`June 29, 2016.
`
`The parties represent that they have settled their disputes and
`
`memorialized their settlement in the written agreement submitted in each
`
`case. See, e.g., IPR2015-01470, Paper 24, 2-3. In the joint motions, the
`parties also represent that the settlement agreementresolvesall disputes
`
`betweenthe parties in the inter partes reviews andthe related lawsuit. Jd.
`
`The joint motion identifies pending proceedingsrelated to the
`
`contested patents involving defendants other than Petitioner. See, e.g., id. at
`
`8-9. On this record, no motion by anythird party for joinder with these
`
`inter partes reviewsis pending.
`
`This matter is at a stage prior to its final hearing, with no decision on
`
`the merits having been made. Upon consideration of the facts before us, we
`
`determinethat it is appropriate to terminate the proceedings with respect to
`
`both parties. See 35 U.S.C. § 317(a); 37 C.F.R. §§ 42.72, 42.74. Therefore,
`
`
`
`IPR2015-01470 through IPR2015-01475
`
`the joint motions to terminate the proceedings are granted. This paper does
`
`not constitute a final written decision pursuant to 35 U.S.C. § 318(a).
`
`Forthe foregoing reasons,it is:
`
`ORDER
`
`ORDEREDthatthe parties’ joint request in each proceeding that the
`
`settlement agreement (IPR2015-01470, Ex. 1025; IPR2015-01471, Ex.
`
`1025; IPR2015-01472, Ex. 1025; IPR2015-01473, Ex. 1025; IPR2015-
`
`01474, Ex. 1025; IPR2015-01475, Ex. 1025) be treated as business
`
`confidential information and be kept separate from the patentfile is granted;
`
`and
`
`KURTHER ORDEREDthat the joint motions to terminate in each of
`
`the IPR2015-01470, IPR2015-01471, IPR2015-01472, IPR2015-01473,
`
`IPR2015-01474, and IPR2015-01475 proceedings are granted and each of
`
`the proceedings is terminated with respect to both Petitioner and Patent
`
`Owner
`
`PETITIONER:
`Michael V. Messinger
`Michelle K. Holoubek
`STERNE, KESSLER, GOLDSTEIN & FOX PLLC
`
`mikem-PTAB@skgf.com
`mholoubek-PTAB@skgf.com
`
`PATENT OWNER:
`
`MaryA. Falcs
`San Diego Patent Prep & Pros, Inc.
`
`mryfis@gmail.com
`
`
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