`571-272-7822
`
`Paper 35
` Entered: July 31, 2019
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY CORPORATION,
`Petitioner,
`
`v.
`
`FUJIFILM CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2018-00876 (Patent 6,462,905 B1)
`Case IPR2018-00877 (Patent 6,462,905 B1)1
`____________
`
`Before SALLY C. MEDLEY, GREGG I. ANDERSON, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`DECISION
`Granting Joint Motion to Terminate
`37 C.F.R. § 42.72
`
`
`
`
`
`
`
`1 With respect to any further filings, the parties are not authorized to use this
`caption.
`
`
`
`Case IPR2018-00876 (Patent 6,462,905 B1)
`Case IPR2018-00877 (Patent 6,462,905 B1)
`
`
`INTRODUCTION
`Per our email dated July 24, 2019, we authorized the filing of a motion to
`terminate the above identified proceedings (“’876 IPR” and “’877 IPR”). ’876
`and ’877 IPRs, Ex. 3002. The ’876 and ’877 IPRs challenge claims of U.S.
`Patent No. 6,462,905. On July 24, 2019, Sony Corporation (“Petitioner”) and
`FUJIFILM Corporation (“Patent Owner”) filed a Joint Motion to Terminate
`Proceeding Under 35 U.S.C § 317 and Joint Request to Keep Papers Separate
`as Business Confidential Information (“Joint Motion to Terminate and Keep
`Separate”) for each proceeding. ’876 IPR, Paper 38, ’877 IPR, Paper 34.
`Concurrently with the filing of the Joint Motion to Terminate and Keep
`Separate, the parties filed a true and correct copy of a settlement agreement.
`’876 IPR and ’877 IPR, Ex. 2019.
`DISCUSSION
`The Joint Motion to Terminate and Keep Separate sets forth the parties’
`agreement that they have settled their dispute with respect to the challenged
`patents and have reached agreement to seek termination of the ’876 and ’877
`IPRs. ’876 IPR, Paper 38, 1, ’877 IPR, Paper 34, 1. The parties assert that
`there “are no collateral agreements or understandings made in connection with,
`or in contemplation of, the termination” of the proceedings. ’876 IPR, Paper
`38, 1–2, ’877 IPR, Paper 34, 1–2. The parties request termination of the ’876
`and ’877 IPRs. Id.
`The parties provide reasons why termination is proper, including that we
`have not “decided the merits of the proceeding before the request for
`termination [wa]s filed.” Id. at 2 (citing 35 U.S.C. § 317(a)). We agree that
`“[t]here are strong public policy reasons to favor settlement between the parties
`to a proceeding,” and “[t]he Board expects that a proceeding will terminate
`after the filing of a settlement agreement, unless the Board has already decided
`2
`
`
`
`
`Case IPR2018-00876 (Patent 6,462,905 B1)
`Case IPR2018-00877 (Patent 6,462,905 B1)
`
`the merits of the proceeding.” Id. (citing Patent Office Trial Practice
`Guidelines, Federal Register Vol. 77, No. 157, p. 48768. We are persuaded
`that, under these circumstances, it is appropriate to terminate all pending
`proceedings between the parties as identified above without rendering a final
`written decision. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72.
`ORDER
`
`Accordingly, it is:
`ORDERED that the joint motion to terminate the proceedings is
`GRANTED, and the ’876 IPR and ’877 IPR proceedings are hereby
`TERMINATED as to all parties;
`FURTHER ORDERED that the parties’ joint request to treat the
`settlement agreement as business confidential information is GRANTED, and
`Exhibit 2019 in the ’876 IPR and ’877 IPR shall be: (i) treated as business
`confidential information; (ii) kept separate from the files of U.S. Patent No.
`6,462,905; (iii) kept confidential from any third party; (iv) filed as “BOARD
`AND PARTIES ONLY” as accessible only to the Board and the parties to this
`proceeding; and (v) made available only to Federal 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); and
`FURTHER ORDERED that a copy of this Order will be filed in the ’876
`IPR and ’877 IPR proceedings.
`
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`Case IPR2018-00876 (Patent 6,462,905 B1)
`Case IPR2018-00877 (Patent 6,462,905 B1)
`
`
`PETITIONER:
`
`Richard Giunta
`Rgiunta-ptab@wolfgreenfield.com
`
`Michael Rader
`Mrader-ptab@wolfgreenfield.com
`
`Randy Pritzker
`Rpritzker-ptab@wolfgreenfield.com
`
`Nathan R. Speed
`Nathan.Speed@WolfGreenfield.com
`
`
`PATENT OWNER:
`
`Eliot Williams
`Eliot.williams@bakerbotts.com
`
`Robert Scheinfeld
`Robert.scheinfeld@bakerbotts.com
`
`Robert Maier
`Robert.maier@bakerbotts.com
`
`Jennifer Tempesta
`Jennifer.tempesta@bakerbotts.com
`
`Margaret Welsh
`Margaret.welsh@bakerbotts.com
`
`Katharine M. Burke
`katharine.burke@bakerbotts.com
`
`Daniel Rabinowitz
`daniel.rabinowitz@bakerbotts.com
`
`
`
`
`4
`
`
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