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Inter Partes Review of U.S. Pat. 7,616,955

Docket IPR2017-00461, Patent Trial and Appeal Board (Dec. 9, 2016)
Barbara Parvis, Daniel Galligan, James Arpin, presiding
Case TypeInter Partes Review
Patent
7616955
Petitioner Sony Corporation
Patent Owner Broadcom Corporation
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11 Dismissed Before Institution: Decision Granting Petitioners Unopposed Motion to Dismiss Petition 37 CFR 4271a, 4274

Document IPR2017-00461, No. 11 Dismissed Before Institution - Decision Granting Petitioners Unopposed Motion to Dismiss Petition 37 CFR 4271a, 4274 (P.T.A.B. Jun. 16, 2017)
On June 14, 2017, Petitioner filed an unopposed Motion to Dismiss the Petition, accompanied by a true copy of a written agreement settling the parties’ disputes regarding the ’955 patent.
Furthermore, Petitioner and Broadcom Corporation (“Patent Owner”) filed a Joint Request to have their agreement treated as business confidential information under 37 C.F.R. § 42.74(c).
The parties further certify that there are no collateral agreements or understandings made in connection with, or in contemplation of, the termination of the proceeding; the related district court litigation also has been settled; and there currently is no other pending litigation or proceeding involving the ’955 patent, and none is contemplated in the foreseeable future.
Section 317(a) provides, in relevant part, “[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 the patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” 35 U.S.C. § 317(a) (emphasis added).
Because we have not yet issued a Decision whether to institute an inter partes review, we treat the Motion as seeking dismissal of the Petition, as asserted in the Motion’s title.
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7 Notice of Filing Date Accorded to Petition: Notice of Accord Filing Date

Document IPR2017-00461, No. 7 Notice of Filing Date Accorded to Petition - Notice of Accord Filing Date (P.T.A.B. Jan. 6, 2017)
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.
McAndrews Held & Malloy, Ltd. 500 West Madison Street Suite 3400 Chicago, IL 60661 Swanson & Bratschun, LLC 8210 Southpark Terrace Littleton, CO 80120 Case IPR2017-00461 Patent 7,616,955
If the parties actually engage in alternative dispute resolution, the PTAB would be interested to learn what mechanism (e.g., arbitration, mediation, etc.) was used and the general result.
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9 Motion: Motion to Dismiss the Petition

Document IPR2017-00461, No. 9 Motion - Motion to Dismiss the Petition (P.T.A.B. Jun. 14, 2017)
Broadcom Corporation (“Patent Owner”) jointly request termination of this inter partes review (IPR) of U.S. Patent 7,616,955, Case No. IPR2017-00461.
Petitioner and Patent Owner have settled their disputes, and have reached agreement to terminate this IPR.
In accordance with 37 C.F.R. § 42.20(b), the parties sought, and received via email, authorization from the Board to file this motion on June 12, 2017.
The settlement agreement between the parties has been made in writing, and a true and correct copy has been filed as Exhibit 1009 to this motion as business confidential information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b)- (c).
The parties hereby certify that there are no collateral agreements or understandings made in connection with, or in contemplation of, the termination of the proceeding.
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10 Motion: Joint Request to File Settlement Agreement as Business Confidential

Document IPR2017-00461, No. 10 Motion - Joint Request to File Settlement Agreement as Business Confidential (P.T.A.B. Jun. 14, 2017)
Pursuant to 37 C.F.R. § 42.74(c), Sony Corporation (“Petitioner”) and
Broadcom Corporation (“Patent Owner”) jointly request to file the settlement agreement between the parties, Exhibit 1009, as business confidential information to be kept separate from the file of the involved patents.
The parties sought, and received via email, authorization from the Board to file this request on June 12, 2017.
Counsel for Petitioner Joint Request to File Settlement Agreement as Business Confidential Information
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1 Petition: Petition for Inter Partes Review

Document IPR2017-00461, No. 1 Petition - Petition for Inter Partes Review (P.T.A.B. Dec. 9, 2016)
“comprising a processor is operable to compute said first coding rate in said transmitter based on said received feedback information for transmitting said at least a portion of said subsequent data” (claim 23) ............................. 56
Thus, Kim addresses the same problem as Ling, Walton, and the ’955 patent, but discloses a refined method for further improving the system performance using a greedy algorithm.
Thus, Ling discloses a transmitter operable to transmit at least a portion of subsequent data having at least a first coding rate based on the assignment of bits via at least one of the plurality of RF channels.
Motivation to Combine Ling and Walton “When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp.
“comprising a processor is operable to compute said first coding rate in said transmitter based on said received feedback information for transmitting said at least a portion of said subsequent data” (claim 23)
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8 Preliminary Response: PO Broadcom Corp Preliminary Response

Document IPR2017-00461, No. 8 Preliminary Response - PO Broadcom Corp Preliminary Response (P.T.A.B. Apr. 6, 2017)

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6 Mandatory Notice: PATENT OWNER BROADCOM CORPORATION MANDATORY...

Document IPR2017-00461, No. 6 Mandatory Notice - PATENT OWNER BROADCOM CORPORATION MANDATORY NOTICES UNDER 37 CFR 428 (P.T.A.B. Dec. 30, 2016)

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