Trials@uspto.gov
`571-272-7822
`
`
`Paper 21
`Date: June 10, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`TCT MOBILE (US) INC.,
`HUIZHOU TCL MOBILE COMMUNICATION CO. LTD.,
`SHENZHEN TCL CREATIVE CLOUD TECHNOLOGY CO., LTD.,
`SONY MOBILE COMMUNICATIONS AB, SONY MOBILE
`COMMUNICATIONS, INC., SONY ELECTRONICS INC., and
`SONY CORPORATION,
`Petitioner,
`v.
`ANCORA TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`IPR2020-016091
`Patent 6,411,941 B1
`____________
`
`
`Before THU A. DANG, JONI Y. CHANG, and KEVIN W. CHERRY,
`Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`DECISION
`Settlement as to TCT and TCL After Institution of Trial
`37 C.F.R. § 42.74
`
`
`
`
`1 Sony Mobile Communications AB, Sony Mobile Communications,
`Inc., Sony Electronics Inc., and Sony Corporation, who filed a petition
`in IPR2021-00663 have been joined with this proceeding.
`
`
`
`
`571-272-7822
`
`
`Paper 21
`Date: June 10, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`TCT MOBILE (US) INC.,
`HUIZHOU TCL MOBILE COMMUNICATION CO. LTD.,
`SHENZHEN TCL CREATIVE CLOUD TECHNOLOGY CO., LTD.,
`SONY MOBILE COMMUNICATIONS AB, SONY MOBILE
`COMMUNICATIONS, INC., SONY ELECTRONICS INC., and
`SONY CORPORATION,
`Petitioner,
`v.
`ANCORA TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`IPR2020-016091
`Patent 6,411,941 B1
`____________
`
`
`Before THU A. DANG, JONI Y. CHANG, and KEVIN W. CHERRY,
`Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`DECISION
`Settlement as to TCT and TCL After Institution of Trial
`37 C.F.R. § 42.74
`
`
`
`
`1 Sony Mobile Communications AB, Sony Mobile Communications,
`Inc., Sony Electronics Inc., and Sony Corporation, who filed a petition
`in IPR2021-00663 have been joined with this proceeding.
`
`
`
`
`
`IPR2020-01609
`Patent 6,411,941 B1
`
`
`TCT Mobile (US) Inc., Huizhou TCL Mobile Communication Co.,
`Ltd., and Shenzhen TCL Creative Cloud Technology Co., Ltd. (collectively,
`“Petitioner TCT”) and Ancora Technologies, Inc. (“Patent Owner”) filed a
`Joint Motion to Terminate. Paper 16 (“Mot.”). Petitioner TCT and Patent
`Owner also filed a true copy of their Settlement Agreement in connection
`with the termination as required by 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(b). Ex. 2005. Pursuant to 37 C.F.R. § 42.74(c), Petitioner TCT and
`Patent Owner filed a joint request to treat the Settlement Agreement as
`business confidential information kept separate from the file of the involved
`patent. Paper 15.
`For the reasons set forth below, the Joint Motion to Terminate is
`granted only with respect to Petitioner TCT, but not with respect to the
`Patent Owner. Also, the Joint Request to File Settlement Agreement as
`Business Confidential Information is granted.
`Under the Leahy-Smith America Invents Act, settlement between the
`parties to a proceeding is encouraged. Notably, 35 U.S.C. § 317(a), in part,
`provides the following:
`(a) IN GENERAL.—An 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. If the inter partes review is
`terminated with respect to a petitioner under this section, no
`estoppel under section 315(e) shall attach to the petitioner, or to
`the real party in interest or privy of the petitioner, on the basis of
`that petitioner’s institution of that inter partes review.
`In the Joint Motion, Petitioner TCT and Patent Owner indicate that
`Petitioner TCT and Patent Owner “reached the mutual decision to settle this
`
`2
`
`
`
`IPR2020-01609
`Patent 6,411,941 B1
`proceeding and their related district court litigation regarding the ’941
`patent.” Mot. 2. Although the instant inter partes review has been
`instituted, we have not entered a final written decision in this proceeding.
`Id. In addition, Petitioner TCT and Patent Owner “certify that there are no
`collateral agreements pr imderstamdomgs made in connection with, or in
`contemplation of, the termination of the present proceeding.” Id. at 3.
`Upon review of the procedural posture of this proceeding and the facts
`before us, we determine that the contentions presented in the Joint Motion
`have merit, and that it is appropriate to terminate this proceeding with
`respect Petitioner TCT. The proceeding, however, will not be terminated
`with respect to Patent Owner, as other Petitioner—Sony Mobile
`communications AB, Sony Mobile Communications, Inc., Sony Electronics
`Inc., and Sony Corporation (“Petitioner Sony”)—remains in the proceeding.
`In consideration of the foregoing, it is hereby:
`ORDERED that the Joint Motion to Terminate, with respect to
`Petitoner TCT, is granted;
`FURTHER ORDERED that this review is terminated with respect to
`Petitioner TCT only; but this review continues with Patent Owner and
`Petitioner Sony;
`FURTHER ORDERED that the Joint Request to File Settlement
`Agreement as Business Confidential Information and to keep such
`settlement agreement separate from the patent file, and to make it 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), is granted; and
`FURTHER ORDERED that any subsequent papers filed in this inter
`partes review should not include Petitioner TCT in the caption.
`
`3
`
`
`
`IPR2020-01609
`Patent 6,411,941 B1
`
`
`
`PETITIONER TCT:
`
`John P. Schnurer
`Yun (Louise) Lu
`Kyle R. Canavera
`PERKINS COIE LLP
`schnurer-ptab@perkinscoie.com
`lu-ptab@perkinscoie.com
`canavera-ptab@perkinscoie.com
`
`
`PETITIONER SONY:
`
`Nicholas T. Peters
`David Gosse
`Paul Henkelmann
`FITCH, EVEN, TABIN & FLANNERY LLP
`ntpete@fitcheven.com
`dgosse@fitcheven.com
`phenkelmann@fitcheven.com
`
`
`PATENT OWNER:
`
`John P. Rondini
`John S. LeRoy
`Marc Lorelli
`BROOKS KUSHMAN P.C.
`jrondini@brookskushman.com
`jleroy@brookskushman.com
`mlorelli@brookskushman.com
`
`
`4
`
`
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