`571-272-7822 Entered: November 18, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`QOMO HITEVISION, LLC,
`Petitioner,
`
`v.
`
`PATHWAY INNOVATIONS AND TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00661
`Patent 8,508,751 B1
`____________
`
`
`Before THOMAS L. GIANNETTI, PETER P. CHEN, and GARTH D. BAER,
`Administrative Patent Judges.
`
`BAER, Administrative Patent Judge.
`
`
`DECISION
`Termination of the Proceeding
`37 C.F.R. §§ 42.72, 42.73, 42.74
`
`
`
`
`
`
`IPR2016-00661
`Patent 8,508,751 B1
`
`I. DISCUSSION
`On November 15, 2016, the parties filed a joint motion to terminate this
`proceeding under 35 U.S.C. § 317 and 37 C.F.R. § 42.74. Paper 11. The parties
`also filed a copy of their settlement agreement, in accordance with 37 C.F.R.
`§ 42.74(b). Ex. 1012. The joint motion to terminate includes a joint request to
`treat the settlement agreement as confidential business information, pursuant to
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 11, 1. The parties indicate in
`their joint motion that they have settled their dispute and have agreed to request
`termination of this inter partes review. Id. For the reasons set forth below, we
`grant the joint motion to terminate and the joint request to treat the settlement
`agreement as business confidential information.
`Under 35 U.S.C. § 317(a), “[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.” In this case, briefing is not
`complete, and we have not had an oral hearing or issued a final written decision.
`Thus, upon consideration of the facts before us, we determine it is appropriate to
`terminate this case and enter judgment without rendering a final written decision.
`See 37 C.F.R. §§ 42.72, 42.73, 42.74. We determine also that the parties have
`complied with the requirements of 37 C.F.R. § 42.74(c), and therefore, we grant
`the parties’ joint request to treat the settlement agreement as business confidential
`information.
`
`II. ORDER
`
`
`
`Accordingly, it is:
`ORDERED that the parties’ joint motion to terminate this proceeding is
`granted and this case is hereby terminated; and
`
`2
`
`
`
`IPR2016-00661
`Patent 8,508,751 B1
`
`FURTHER ORDERED that the parties’ joint request that the agreement (Ex.
`1012) submitted in support of their joint motion be treated as business confidential
`information, kept separate from the file of U.S. Patent No. 8,508,751, and made
`available only under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(c), is granted.
`
`
`3
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`FOR PETITIONER:
`Lei Mei
`Laurence Sandell
`MEI & MARK LLP
`mei@meimark.com
`lsandell@meimark.com
`
`
`
`FOR PATENT OWNER:
`Trevor Coddington
`David Beckwith
`James Fazio
`SAN DIEGO IP LAW GROUP LLP
`trevorcoddington@sandiegoiplaw.com
`davidbeckwith@sandiegoiplaw.com
`jamesfazio@sandiegoiplaw.com