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Panasonic System Networks Co., Ltd. v. 6115187 CANADA INC.

Docket IPR2014-01438, Patent Trial and Appeal Board (Sept. 3, 2014)
Brian McNamara, Kevin Turner, Robert Weinschenk, presiding
Case TypeInter Partes Review
Patent
6844990
Petitioner Panasonic System Networks Co., Ltd.
Patent Owner 6115187 CANADA INC.
Assignee IMMERVISION, INC.
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13 Refund Approval: Notice of Refund

Document IPR2014-01438, No. 13 Refund Approval - Notice of Refund (P.T.A.B. Dec. 1, 2014)
Petitioner’s request for a refund of certain post-institution fees paid on September 3, 2014 in the above proceeding is hereby granted.
The amount of $14,800.00 has been refunded to Petitioner’s credit card, the original method of payment.
The parties are reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in the Patent Review Processing System (PRPS), accessible from the Board Web site at http://www.uspto.gov/PTAB.
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11 Final Decision: Final Decision

Document IPR2014-01438, No. 11 Final Decision - Final Decision (P.T.A.B. Nov. 26, 2014)
On November 21, 2014, the parties filed a joint motion to terminate under 35 U.S.C. § 317 and 37 C.F.R. § 42.74 (Paper 9, “Mot.”), along with a copy of the parties’ written settlement agreement (Ex. 1015).
The parties concurrently filed a joint request to treat the settlement agreement as business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
A Patent Owner Preliminary Response has not been filed, and a decision whether to institute a trial has not been rendered.
Based on the facts of this case, we determine it is appropriate to enter judgment terminating this proceeding with respect to all parties.
In consideration of the foregoing, it is hereby: ORDERED that the joint motion to terminate is granted, and this proceeding is terminated as to all parties; and FURTHER ORDERED that the joint request that the settlement agreement filed as Exhibit 1015 in this proceeding be treated as business confidential information, kept separate from the file of the ’990 patent, and made available only to Federal Government agencies upon written request or any other person upon written request and a showing of good cause pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is granted.
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6 Notice: Notice of Accepting Corrected Petition

Document IPR2014-01438, No. 6 Notice - Notice of Accepting Corrected Petition (P.T.A.B. Sep. 23, 2014)
The corrected petition filed on September 16, 2014 in the above proceeding is accepted.
The parties are reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in the Patent Review Processing System (PRPS), accessible from the Board Web
To file documents, users must first obtain a user ID and password by registering with PRPS.
Information regarding how to register with and use PRPS is available at the Board Web site.
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3 Notice of Filing Date Accorded to Petition: Notice of Filing Date Accorded to Petition and Defective Petition

Document IPR2014-01438, No. 3 Notice of Filing Date Accorded to Petition - Notice of Filing Date Accorded to Petition and Defective Petition (P.T.A.B. Sep. 11, 2014)
The petition for inter partes review, in the above proceeding has been accorded the filing date of September 3, 2014.
For more information, please consult the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012), which is available on the Board Web site at http://www.uspto.gov/PTAB.
Patent Owner is advised of the requirement to submit mandatory notice information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of the petition.
The parties are advised that under 37 C.F.R. § 42.10(c), recognition of counsel pro hac vice requires a showing of good cause.
Such motions shall be filed in accordance with the “Order -- Authorizing Motion for Pro Hac Vice Admission” in Case IPR2013-00639, Paper 7, a copy of which is available on the Board Web site under “Representative Orders, Decisions, and Notices.” The parties are reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in the Patent Review Processing System (PRPS), accessible from the Board Web site at http://www.uspto.gov/PTAB.
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9 Motion: Joint Motion to Terminate and Notice of Settlement

Document IPR2014-01438, No. 9 Motion - Joint Motion to Terminate and Notice of Settlement (P.T.A.B. Nov. 21, 2014)
Pursuant to 35 U.S.C. § 317(a), 37 C.F.R. § 42.74, and the teleconference with the PTAB on November 21, 2014 authorizing the filing of this joint motion, Petitioner Panasonic System Networks Co., Ltd, (“Panasonic”) and Patent Owner 6115187 Canada Inc., (“ImmerVision”), hereby provide notice that they have negotiated a settlement and jointly request termination of the Inter Partes Review Case No. IPR2014-01438 involving U.S. Patent No. 6,844,990 (“the ‘990 Patent”).
The basis for this Joint Motion is the settlement of the present dispute that relates to the ‘990 Patent between Panasonic and ImmerVision.
The parties request that the settlement agreement be treated as business confidential information and be kept separate from the file of the ‘990 Patent.
For the reasons stated above, the Parties respectfully request that the Board terminate Inter Partes Review of U.S. Patent No. 6,844,990, Case No. IPR2014- 01438.
Authorization is hereby provided by Petitioner Panasonic to charge any fee necessary for consideration and/or entry of this paper and/or the settlement agreement to Deposit Account 19-0089.
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10 Motion: Joint Request to Treat Settlement Agreement as Business Confidential

Document IPR2014-01438, No. 10 Motion - Joint Request to Treat Settlement Agreement as Business Confidential (P.T.A.B. Nov. 21, 2014)
Case IPR2014-01438 U.S. Patent No. 6,844,990 Issue Date: January 18, 2005 Title: METHOD FOR CAPTURING AND DISPLAYING A
Pursuant to 35 U.S.C. § 317(b), 37 C.F.R. § 42.74(c), and the teleconference with the PTAB on November 21, 2014 authorizing the filing of this joint request, Petitioner Panasonic System Networks Co., Ltd. and Patent Owner 6115187 Canada Inc. hereby jointly request that a true copy of the settlement agreement filed concurrently herewith as Exhibit 1015 be treated as business confidential information and be kept separate from the file of IPR2014-01438 involving U.S. Patent No. 6,844,990.
The Parties jointly request that this settlement agreement be made available only to Federal Government agencies on written request or to any person only on a showing of good cause.
Respectfully submitted, Attorney for Petitioner, Panasonic System Networks Co., Ltd.
Attorney for Patent Owner, 6115187 Canada Inc. /John D. Simmons/ John D. Simmons Registration No. 52,225
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5 Reply: Amended Petition

Document IPR2014-01438, No. 5 Reply - Amended Petition (P.T.A.B. Sep. 16, 2014)
Petition for Inter Partes Review of U.S. Patent No. 6,844,990 “Substantially,” as recited in claims 1 and 17, should be construed as an amount of compression or expansion obtained using a lens with a non-linear “distribution function having a maximum divergence of at least ±10% compared to a linear distribution function.” Ex. 1001, 4:11-21; Feinberg Dec. (Ex. 1013) ¶ 35.
A POSA in the subject matter claimed and disclosed in the ‘990 patent at the time of the invention would have had at least a bachelor’s degree in Physics and/or Electrical Engineering and at least five years’ experience working with lenses or related optical systems.
Nagaoka further discloses a panoramic objective lens: “an image of half of the sphere is picked up by the fisheye lens.” Ex. 1003 1:23-31, Feinberg Petition for Inter Partes Review of U.S. Patent No. 6,844,990 Dec. (Ex. 1013) ¶ 103.
optical means for projecting a panorama into an image plane of the objective lens, linear “lens, indicated generally at 14, designed to capture and enhance the peripheral content of a hemispheric scene.” Ex. 1002 8:60-62.
Fisher also discloses “The image cast by the lens falls on the vidicon of a Petition for Inter Partes Review of U.S. Patent No. 6,844,990 television camera where it is scanned and transmitted to a projector.” Ex. 1004 Abstract and 4:35-45.
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