IPR2021-00663 (P.T.A.B. Jul. 16, 2021)

Ancora Technologies, Inc.

Patent Trials and Appeals BoardJul 16, 2021

IPR2021-00663 (P.T.A.B. Jul. 16, 2021)

Trials@uspto.gov Paper 20 571-272-7822 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 2 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. IPR2020-01609 and IPR2021-00663 Patent 6,411,941 B1 3 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. IPR2020-01609 and IPR2021-00663 Patent 6,411,941 B1 4 For PETITIONER: Gregory Gewirtz Jonathan David LERNER, DAVID, LITTENBERG, KRUMHOLZ & MENTLIK, LLP Jdavid.ipr@ldlkm.com ggewirtz.ipr@ldlkm.com For PATENT OWNER: John Rondini Marc Lorelli BROOKS KUSHMAN P.C. jrondini@brookskushman.com mlorelli@brookskushman.com