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Sony Corporation v. Straight Path IP Group, Inc.

Docket IPR2014-00231, Patent Trial and Appeal Board (Dec. 5, 2013)
Bryan Moore, Miriam Quinn, Stacey White, presiding
Case TypeInter Partes Review
Patent
6009469
Petitioner Sony Corporation
Patent Owner Straight Path IP Group, Inc.
Assignee STRAIGHT PATH COMMUNICATIONS INC.
...
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14 Notice: Notice of Refund

Document IPR2014-00231, No. 14 Notice - Notice of Refund (P.T.A.B. Jun. 5, 2014)
Mailed: June 4, 2014 Before Althea Wilburn, Trial Paralegal.
Petitioner’s request for a refund of certain post-institution fees paid on December 5, 2013 in the above proceeding is hereby granted.
The amount of $14,000.00 was refunded to Petitioner’s credit card.
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
Case IPR2014-00231 Patent 6,009,469 Patent Review Processing System (PRPS), accessible from the Board Web site at http://www.uspto.gov/PTAB.
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12 Final Decision: Order Motion to Terminate

Document IPR2014-00231, No. 12 Final Decision - Order Motion to Terminate (P.T.A.B. May. 2, 2014)
On April 28, 2014, the parties filed joint motions to terminate the trial in each of the instant proceedings under 35 U.S.C. § 317(a).2 Along with the motions, the parties filed copies of a document they describe as the written settlement agreement,3 as well as separate joint requests to treat the settlement agreement as business confidential information under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).4 As the motions and exhibits in all three proceedings are substantially similar, we refer herein to the papers filed in IPR2014-00229 for convenience.
Patent Owner has filed preliminary responses in each of the instant proceedings.5 The Board, however, has not determined whether trial will be instituted for any of the requests for inter partes review.
Cases IPR2014-00229, -230, -231 Patents 6,131,121, 6,108,704, 6,009,464 Petitioner as respondents in Certain Point-to-Point Network Communication Devices and Products Containing Same, Inv. No. 337-TA-892 (U.S.I.T.C.) and Straight Path IP Group, Inc. v. Sony Corp., No. 1:13-cv-01071-AJT (E.D.
Accordingly, it is: ORDERED that the joint motions to terminate these proceedings are granted, and that these proceedings are hereby terminated as to all parties, including Petitioner and Patent Owner; FURTHER ORDERED that the parties’ joint requests that the settlement agreement (Ex. 1047) be treated as business confidential information, kept separate from the file of the involved patents, and made available only to Federal
Cases IPR2014-00229, -230, -231 Patents 6,131,121, 6,108,704, 6,009,464 Government agencies on written request, or to any person on a showing of good cause under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), are granted.
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8 Notice: Order Conduct of the Proceeding

Document IPR2014-00231, No. 8 Notice - Order Conduct of the Proceeding (P.T.A.B. Apr. 28, 2014)
Cases IPR2014-00229, -230, -231 Patents 6,131,121, 6,108,704, 6,009,464 On April 28, 2014, a telephone conference call was held between respective counsel for the parties and Judges Quinn, Moore, and White.
The rule governing settlement indicates that any agreement between the parties made in connection with, or in contemplation of, the termination of a proceeding shall be in writing and filed with the Board.
Based on the facts of this case, the Board authorizes the parties to file a joint motion to terminate these proceedings.
With respect to having the settlement agreement treated as business confidential information under 37 C.F.R. § 42.74(c), the parties must file the confidential settlement agreement electronically in the Patent Review Processing System (“PRPS”) as an exhibit in accordance with the instructions provided on the Board’s website (uploading as “Parties and Board Only”).
Accordingly, it is ORDERED that the parties are authorized to file a joint motion to terminate each of these proceedings; the due date for the joint motion is May 5, 2014; FURTHER ORDERED that each of the joint motions must be accompanied by a true copy of the parties’ settlement agreement in connection with the termination of these proceedings, as required by 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b); FURTHER ORDERED that the parties may file in each proceeding a separate paper requesting that the settlement agreement be treated as business confidential information as specified in 37 C.F.R. § 42.74(c); and FURTHER ORDERED that any confidential settlement agreement must be filed, as an exhibit, electronically in PRPS in accordance with the instructions provided on the Board’s website (uploading as “Parties and Board Only”).
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4 Notice of Filing Date Accorded to Petition: Notice of Filing Date Accorded to Petition

Document IPR2014-00231, No. 4 Notice of Filing Date Accorded to Petition - Notice of Filing Date Accorded to Petition (P.T.A.B. Dec. 21, 2013)
Patent Owner may file a preliminary response to the petition no later than three months from the date of this notice.
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 Case IPR2014-00231 Patent 6,009,469 site at http://www.uspto.gov/PTAB.
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10 Motion: Joint Request to File Agreement as Business Confidential Information

Document IPR2014-00231, No. 10 Motion - Joint Request to File Agreement as Business Confidential Information (P.T.A.B. Apr. 28, 2014)
Petitioner, Sony Corporation (“Sony”) and Patent Owner, Straight Path IP Group, Inc. ( “Straight Path”) hereby jointly request the Settlement Agreement and the License Agreement filed concurrently herewith as Exhibit 1047 be treated as business confidential information, be kept separate from the file of the involved U.S. Patent No. 6,009,469 and be made 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).
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9 Motion: Joint Motion to Terminate Proceeding

Document IPR2014-00231, No. 9 Motion - Joint Motion to Terminate Proceeding (P.T.A.B. Apr. 28, 2014)

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1 Petition: IPR Petition US6009469

Document IPR2014-00231, No. 1 Petition - IPR Petition US6009469 (P.T.A.B. Dec. 5, 2013)

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