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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`___________________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`___________________________________________
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`Sony Corporation
`Petitioner
`
`v.
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`FUJIFILM Corporation
`Patent Owner
`___________________
`
`Case IPR2018-00877
`U.S. Patent No. 6,462,905
`___________________
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`JOINT MOTION TO TERMINATE PROCEEDING UNDER 35 U.S.C §327
`AND JOINT REQUEST TO KEEP PAPERS SEPARATE AS BUSINESS
`CONFIDENTIAL INFORMATION
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`
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`IPR2018-00877
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`I.
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`RELIEF REQUESTED
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`
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`U.S. Patent No. 6,462,905
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`In accordance with 35 U.S.C. § 327, Sony Corporation (“Petitioner”) and
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`FUJIFILM Corporation (“Patent Owner”) (collectively, the “Parties”), jointly file
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`this motion requesting termination of Inter Partes Review No. IPR2018-00877 (“IPR
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`Proceeding”) in its entirety. The Parties additionally request that the Parties’
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`settlement agreement be treated in its entirety as Business Confidential Information
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`and be kept separate from the files of U.S. Patent No. 6,462,905 (the “’905 patent”)
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`pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
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`The IPR Proceeding was filed on March 30, 2018 as a petition for inter partes
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`review of the ’905 patent. The IPR Proceeding was instituted on October 9, 2018
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`Sony and FUJIFILM reached an agreement to terminate this IPR Proceeding
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`and entered into a Worldwide Resolution Agreement and Patent Cross-License (the
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`“Agreement”). The Agreement has been made in writing, and a true copy of the same
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`is attached as Exhibit A.1 There are no additional collateral agreements or
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`undertakings made in connection with, or in contemplation of, termination of this
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`proceeding.
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`1 As set forth below, the Settlement Agreement is being filed electronically via the
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`PTAB’s E2E System as “Parties and Board Only” and the Parties request it be treated
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`as business confidential information.
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`
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`1
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`IPR2018-00877
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`U.S. Patent No. 6,462,905
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`II.
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`REASONS WHY TERMINATION IS PROPER
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`Termination is appropriate under 35 U.S.C. § 327(a) because the Parties are
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`jointly requesting termination, and the Office has not “decided the merits of the
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`proceeding before the request for termination [wa]s filed.” 35 U.S.C. § 327(a). In
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`this IPR Proceeding, oral arguments were heard on June 21, 2019 and no decision
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`on the merits has been made. Further, the Patent Office Trial Practice Guidelines
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`provide that “[t]here are strong public policy reasons to favor settlement between the
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`parties to a proceeding,” and “[t]he Board expects that a proceeding will terminate
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`after the filing of a settlement agreement, unless the Board has already decided the
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`merits of the proceeding.” Federal Register Vol. 77, No. 157, p. 48768. As no
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`decision on the merits has been made in this IPR Proceeding, the strong public policy
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`favoring settlement supports termination here.
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`III.
`IDENTIFICATION OF RELATED PROCEEDINGS
`The ’905 patent is subject to the following related proceedings between the
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`Parties:
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` Sony Corp. v. Fujifilm Corp., IPR No. 2018-00876 (filed March 30, 2018)
` Certain Magnetic Data Storage Tapes and Cartridges Containing the Same,
`337-TA-1076 (USITC Sept. 19, 2017);
` Fujifilm Corp. v. Sony Corp., 1-17-cv-01309 (D. Del. 2017).
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`With respect to the related IPR proceeding, the Board has instituted trial on
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`IPR No. 2018-00876 and heard oral arguments on June 21, 2019 along with oral
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`arguments in this IPR Proceeding. The parties are in the process of jointly seeking
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`2
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`IPR2018-00877
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`to rescind the remedial orders issued in the related ITC investigation and to dismiss
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`U.S. Patent No. 6,462,905
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`the related district court proceeding.
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`Based on the foregoing, the Parties jointly request termination of Inter Partes
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`Review No. IPR2018-00877.
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`IV.
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`REQUEST TO TREAT SETTLEMENT AGREEMENT AS
`BUSINESS CONFIDENTIAL INFORMATION
`The Parties hereby jointly request that the Agreement filed herewith as Exhibit
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`A be treated as business confidential information, be kept separate from the file of
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`the above captioned IPR, and be made available only to Federal Government
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`agencies on written request, or to any person on a showing of good cause pursuant
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`to 35 U.S.C. § 327(b) and 37 C.F.R. § 42.74(c). In view of that request, the
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`Agreement has been filed for access by the “Parties and Board Only.”
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`Date: July 24, 2019
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`Respectfully submitted,
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`BAKER BOTTS L.L.P.
`
`/s/ Eliot D. Williams
`Eliot D. Williams
`1001 Page Mill Road
`Building One, Suite 200
`Palo Alto, California 94304-1007
`eliot.williams@bakerbotts.com
`USPTO Reg. No. 50,822
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`Attorneys for Patent Owner.
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`WOLF, GREENFIELD & SACKS, P.C.
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`3
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`IPR2018-00877
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`Date: July 24, 2019
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`U.S. Patent No. 6,462,905
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`/s/ Nathan R. Speed
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`
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`Richard F. Giunta, Reg. No. 36,149
`Michael N. Rader, Reg. No. 52,146
`Randy J. Pritzker, Reg. No. 35,986
`Nathan R. Speed (pro hac vice)
`600 Atlantic Avenue
`Boston, MA 02210
`(617) 646-8000 Phone
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`Attorneys for Petitioner.
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`4
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`IPR2018-00877
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`U.S. Patent No. 6,462,905
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that on July 24, 2019, pursuant to 37 C.F.R.
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`§§ 42.6(e) and 42.105(b), a copy of this Joint Motion to Terminate was served on
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`Petitioner’s counsel via email at the following correspondence addresses:
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`Richard F. Giunta
`RGiunta-PTAB@wolfgreenfield.com
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`Michael N. Rader
`MRader-PTAB@wolfgreenfield.com
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`Randy J. Pritzker
`RPritzker-PTAB@wolfgreenfield.com
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`Nathan Speed
`Nathan.Speed@WolfGreenfield.com
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`Respectfully submitted,
`BAKER BOTTS LLP
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`July 24, 2019
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`/Eliot D. Williams/
`Eliot D. Williams
`Reg. No. 50,822
`1001 Page Mill Road
`Building One, Suite 200
`Palo Alto, CA 94304
`Phone: (650) 739-7511
`Facsimile: (650) 739-7611
`eliot.williams@bakerbotts.com
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`ATTORNEYS FOR PATENT OWNER
`FUJIFILM CORPORATION
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`5
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