`571-272-7822
`
`
`
`
`
`Paper 25
`Date: July 16, 2021
`
`
`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,
`Petitioner,
`v.
`ANCORA TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`IPR2020-016091
`IPR2021-00663
`Patent 6,411,941 B1
`____________
`
`
`
`
`Before THU A. DANG, JONI Y. CHANG, and KEVIN W. CHERRY,
`Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`TERMINATION
`Due to Settlement After Institution of Trial
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`1 Sony Mobile Communications AB, Sony Mobile Communications, Inc.,
`Sony Electronics Inc., and Sony Corporation (collectively “Petitioner
`Sony”), who filed a Petition in IPR2021-00663, have been joined with
`IPR2020-01609. IPR2020-01609 was terminated with respect to TCT
`Mobile (US) Inc., Huizhou TCL Mobile Communication Co., Ltd., and
`Shenzhen TCL Creative Cloud Technology Co., Ltd. Paper 21.
`
`
`
`IPR2020-01609 and IPR2021-00663
`Patent 6,411,941 B1
`
`
`Petitoiner Sony and Ancora Technologies, Inc. (“Patent Owner”) filed
`a Joint Motion to Terminate in each of the above-identified proceedings.
`Paper 24 (“Mot.”).2 The parties 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. 2026. Pursuant to 37 C.F.R.
`§ 42.74(c), the parties filed a joint request to treat the Settlement Agreement
`as business confidential information kept separate from the file of the
`involved patent. Paper 23.
`For the reasons set forth below, the Joint Motions to Terminate are
`granted. Also, the Joint Requests to File Settlement Agreement as Business
`Confidential Information are 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 Motions, the parties indicate that they “reached the mutual
`decision to settle this proceeding and their related district court litigation
`regarding the ’941 patent.” Mot. 2. Although the instant inter partes
`reviews have been instituted, we have not entered a final written decision.
`
`
`2 Our citations refer to IPR2020-01609.
`
`2
`
`
`
`IPR2020-01609 and IPR2021-00663
`Patent 6,411,941 B1
`
`Id. In addition, the parties “certify that there are no collateral agreements or
`understandings made in connection with, or in contemplation of, the
`termination of the present proceeding.” Id. at 3.
`Upon review of the procedural posture of these proceedings and the
`facts before us, we determine that the contentions presented in the Joint
`Motion have merit, and that it is appropriate to terminate these proceedings.
`In consideration of the foregoing, it is hereby:
`ORDERED that the Joint Motion to Terminate filed in each
`above-identified proceeding is granted;
`FURTHER ORDERED that both IPR2020-001609 and
`IPR2021-00663 are terminated;
`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), filed in each above-identified proceeding is granted.
`
`
`
`
`
`
`
`3
`
`
`
`IPR2020-01609 and IPR2021-00663
`Patent 6,411,941 B1
`
`For PETITIONER:
`
`Gregory Gewirtz
`Jonathan David
`LERNER, DAVID, LITTENBERG, KRUMHOLZ & MENTLIK, LLP
`Jdavid.ipr@ldlkm.com
`ggewirtz.ipr@ldlkm.com
`
`John Schnurer
`Kyle Canavera
`Yun Lu
`PERKINS COIE LLP
`Schnurer-ptab@perkinscoie.com
`Canavera-ptab@perkinscoie.com
`Lu-ptab@perkinscoie.com
`
`For PATENT OWNER:
`
`Nicholas Peters
`David Goose
`Paul Henkelmann
`FITCH, EVEN, TABIN & FLANNERY LLP
`ntpete@fitcheven.com
`dgosse@fitcheven.com
`phenkelmann@fitcheven.com
`
`
`John Rondini
`John LeRoy
`Marc Lorelli
`BROOKS KUSHMAN P.C.
`jrondini@brookskushman.com
`jleroy@brookskushman.com
`mlorelli@brookskushman.com
`
`
`4
`
`
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