UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`SONY MOBILE COMMUNICATIONS AB, SONY MOBILE
`COMMUNICATIONS, INC., SONY ELECTRONICS INC., and
`SONY CORPORATION,
`
`Petitioners,
`
`v.
`
`ANCORA TECHNOLOGIES INC.,
`
`Patent Owner.
`
`______________
`
`U.S. Patent No. 6,411,941 B1
`
`Case No. IPR2020-016091
`
`______________
`
`
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317 AND 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—
`were joined with this proceeding (paper 20), and original petitioners TCT Mobile
`(US) Inc., Huizhou TCL Mobile Communication Co. Ltd., Shenzhen TCL Creative
`Cloud Technology Co., Ltd. were subsequently terminated (paper 21).
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`SONY MOBILE COMMUNICATIONS AB, SONY MOBILE
`COMMUNICATIONS, INC., SONY ELECTRONICS INC., and
`SONY CORPORATION,
`
`Petitioners,
`
`v.
`
`ANCORA TECHNOLOGIES INC.,
`
`Patent Owner.
`
`______________
`
`U.S. Patent No. 6,411,941 B1
`
`Case No. IPR2020-016091
`
`______________
`
`
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317 AND 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—
`were joined with this proceeding (paper 20), and original petitioners TCT Mobile
`(US) Inc., Huizhou TCL Mobile Communication Co. Ltd., Shenzhen TCL Creative
`Cloud Technology Co., Ltd. were subsequently terminated (paper 21).
`
`
`
`Case No.: IPR2020-01609
`Patent No.: 6,411,941
`
`
`I.
`
`INTRODUCTION
`
`The parties jointly request termination of the inter partes review of U.S.
`
`Patent No. 6,411,941 (“the ’941 patent”), Case No. IPR2021-00663, pursuant to 35
`
`U.S.C. § 317(a), 37 C.F.R. § 42.74, and the Board’s March 22, 2021 Order (Paper
`
`6). This motion is joined by all parties, including Petitioners Sony Mobile
`
`Communications AB, Sony Mobile Communications Inc., Sony Electronics Inc.
`
`and Sony Corporation, and Patent Owner Ancora Technologies, Inc.
`
`Terminating this proceeding is within the Board’s discretion. Exercising that
`
`discretion here would conserve judicial resources and promote the strong policy
`
`reasons that favor settlement.
`
`II.
`
`PUBLIC POLICY FAVORS TERMINATING THIS
`PROCEEDING
`
`The Board has discretion to terminate inter partes review proceedings after
`
`the parties file a settlement agreement. 35 U.S.C. § 317(a); see also 37 C.F.R.
`
`§ 42.72. “There are strong public policy reasons to favor settlement between the
`
`parties to a proceeding.” PTAB Consolidated Trial Practice Guide, at 86 (Nov.
`
`2019), available at https://www.uspto.gov/TrialPracticeGuideConsolidated. The
`
`Board therefore terminates proceedings “after the filing of a settlement agreement,
`
`unless the Board already has decided the merits of the proceeding.” Id.
`
`1
`
`
`
`Case No.: IPR2020-01609
`Patent No.: 6,411,941
`
`
`
`Termination of this proceeding is proper for the following reasons. This
`
`proceeding is at an early stage, and the Board has not decided the merits of the
`
`proceeding. 35 U.S.C. § 317(a); PTAB Consolidated Trial Practice Guide, at 86. The
`
`Board issued its institution decision on June 10, 2021 (Paper 17), which is
`
`preliminary. See St. Jude Med., Cardiology Div., Inc. v. Volcano Corp., 749 F.3d
`
`1373, 1375–76 (Fed. Cir. 2014) (“the Director’s decision whether to institute a
`
`proceeding” differs from a “decision with respect to patentability”). Patent Owner
`
`discovery has only just begun and Ancora has not yet presented evidence, including
`
`expert testimony. No motions are outstanding in this proceeding. Each of these facts
`
`supports terminating this proceeding.
`
`The parties jointly request termination. The parties reached the mutual
`
`decision to settle this proceeding and their related district court litigation regarding
`
`the ’941 patent. The parties agree that settlement of their disputes promotes
`
`efficiency and will minimize unnecessary costs. Terminating this proceeding will
`
`consequently preserve judicial resources and enables the parties to minimize the
`
`cost of litigation.
`
`No public interest or other factors weigh against termination of this
`
`proceeding.
`
`2
`
`
`
`Case No.: IPR2020-01609
`Patent No.: 6,411,941
`
`
`
`The parties executed a confidential settlement agreement to terminate this
`
`proceeding. The settlement agreement is being submitted concurrently herewith.
`
`(See Ex. 2026.) The parties certify that there are no collateral agreements or
`
`understandings made in connection with, or in contemplation of, the termination of
`
`the proceeding. In accordance with 35 U.S.C. § 317 and 37 C.F.R. § 42.74(b), also
`
`submitted concurrently herewith is a joint request that the settlement agreement be
`
`treated as business confidential information, be kept separate from the file of the
`
`involved patent, and be made available only to the Federal Government agencies on
`
`written request, or to any person on showing of good cause under 35 U.S.C. § 317
`
`and 37 C.F.R. § 42.74(c).
`
`For all of the above reasons, the Board should terminate this proceeding to
`
`promote settlement and minimize unneeded expenditure of the Board’s resources.
`
`
`
`
`
`
`
`
`
`3
`
`
`
`Case No.: IPR2020-01609
`Patent No.: 6,411,941
`
`
`III. CONCLUSION
`
`For at least the foregoing reasons, the parties jointly request immediate and
`
`complete termination of this proceeding.
`
`
`Respectfully submitted,
`
`
`
`
` / Gregory S. Gewirtz /
`Gregory S. Gewirtz (Reg. No.: 36,522)
`Jonathan A. David (Reg. No.: 36,494)
`LERNER, DAVID, LITTENBERG,
`KRUMHOLZ & MENTLIK, LLP
`20 Commerce Drive
`Cranford, NJ 07016
`Tel: 908-654-5000
`
`Counsel for Sony Petitioners
`
`Dated: July 14, 2021
`
`
`
`
`
`
` /David A. Gosse/
`David A. Gosse (Reg. No. 61,511)
`FITCH EVEN TABIN & FLANNERY
`LLP
`120 South LaSalle Street
`Suite 2100
`Chicago, IL 60603
`Telephone: (312) 577-7000
`
`Counsel for Patent Owner
`
`4
`
`
`
`Case No.: IPR2020-01609
`Patent No.: 6,411,941
`
`
`
`Certificate of Service
`
`The undersigned hereby certifies that on July 14, 2021, a copy of JOINT
`
`MOTION TO TERMINATE PROCEEDING PURSUANT TO 35 U.S.C.
`
`§ 317 AND 37 C.F.R. § 42.74, was served via electronic mail
`
`to
`
`litigation@lernerdavid.com; ggewirtz@lernerdavid.com; jdavid@lernerdavid.com
`
`which goes to the counsel of record listed below:
`
`LEAD COUNSEL
`Gregory S. Gewirtz, Reg. No. 36,522
`LERNER, DAVID, LITTENBERG,
`KRUMHOLZ & MENTLIK, LLP
`20 Commerce Drive
`Cranford, NJ 07016
`Tel: 908-654-5000
`ggewirtz@lernerdavid.com
`
`
`
`
`
`BACK-UP COUNSEL
`Jonathan A. David, Reg. No. 36,494
`LERNER, DAVID, LITTENBERG,
`KRUMHOLZ & MENTLIK, LLP
`20 Commerce Drive
`Cranford, NJ 07016
`Tel: 908-654-5000
`jdavid@lernerdavid.com
`litigation@lernerdavid.com
`
`
`
`Respectfully submitted,
`
`
`
` /David A. Gosse/
`David A. Gosse (Reg. No. 61,511)
`FITCH EVEN TABIN & FLANNERY LLP
`120 South LaSalle Street
`Suite 2100
`Chicago, IL 60603
`Telephone: (312) 577-7000
`
`Counsel for Patent Owner
`
`
`5
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
