13098090 (P.T.A.B. Jun. 11, 2015)

Google Inc.v.Summit 6 LLC

Patent Trial and Appeal BoardJun 11, 2015

13098090 (P.T.A.B. Jun. 11, 2015)

Trials@uspto.gov Paper No. 10 571.272.7822 Entered: June 11, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ GOOGLE INC., HTC CORPORATION, and HTC AMERICA, INC., Petitioner, v. SUMMIT 6 LLC, Patent Owner. ____________ Case IPR2015-00807 Patent 8,612,515 B2 ____________ Before HOWARD B. BLANKENSHIP, GEORGIANNA W. BRADEN, and KERRY BEGLEY, Administrative Patent Judges. BEGLEY, Administrative Patent Judge. DECISION Joint Motion to Terminate Involvement of the HTC Entities; Joint Motion to File Settlement Agreement as Business Confidential Information 37 C.F.R. §§ 42.5, 42.71, 42.74 On June 9, 2015, Petitioners HTC Corporation and HTC America, Inc. (collectively, “HTC Entities”) and Patent Owner Summit 6 LLC (“Summit 6”) filed a Joint Motion to Terminate Involvement IPR2015-00807 Patent 8,612,515 B2 2 of the HTC Entities (“Joint Motion to Terminate”). Paper 8. The Joint Motion to Terminate requests that we terminate the HTC Entities from this case because the HTC Entities and Summit 6 have entered into a Settlement Agreement. Id. Along with the motion, the parties filed a copy of their Settlement Agreement in accordance with 37 C.F.R. § 42.74(b). Ex. 1015. The parties also submitted a Joint Motion to File Settlement Agreement as Business Confidential Information Pursuant to 37 C.F.R. § 42.74(c). Paper 9. For the reasons set forth below, both motions are granted. In their Joint Motion to Terminate, the HTC Entities and Summit 6 indicate that their Settlement Agreement resolves all disputes between them involving the patent-at-issue in this case, U.S. Patent No. 8,612,515 B2 (“the ’515 patent”). See Paper 8, at 1. In addition, the motion points out that this case is in its initial phase. Id. Summit 6 has not filed a Preliminary Response to the Petition. The Board also has not determined whether to institute inter partes review pursuant to 35 U.S.C. § 314. Upon consideration of the facts before us, we determine that it is appropriate to terminate the HTC Entities’ involvement in this case and to dismiss the HTC Entities as parties to the case. See 37 C.F.R. §§ 42.5(a), 42.71(a), 42.74; Paper 8, at 1–2. We note that the termination of the HTC Entities’ involvement in this case does not terminate the case, because Google Inc. remains as a petitioner. See Paper 8, at 1. Turning to the Joint Motion to File Settlement Agreement as Business Confidential Information Pursuant to 37 C.F.R. § 42.74(c), we determine that the HTC Entities and Summit 6 have complied with the requirements of 37 C.F.R. § 42.74(c) to have their Settlement Agreement treated as business confidential information and kept separate from the files of the ’515 patent. IPR2015-00807 Patent 8,612,515 B2 3 ORDER For the foregoing reasons, it is: ORDERED that the Joint Motion to Terminate Involvement of the HTC Entities (Paper 8) is granted; FURTHER ORDERED that the case continues with Google Inc. as the petitioner; FURTHER ORDERED that any subsequent papers filed in this case should not include HTC Corporation and HTC America, Inc. in the caption; and FURTHER ORDERED that the Joint Motion to File Settlement Agreement as Business Confidential Information (Paper 9) is granted. IPR2015-00807 Patent 8,612,515 B2 4 PETITIONER: John Alemanni Michael Morlock Kilpatrick Townsend & Stockton LLP jalemanni@kilpatricktownsend.com mmorlock@kilpatricktownsend.com PATENT OWNER: Peter Ayers John Shumaker Brian Mangum Lee & Hayes, PLLC peter@leehayes.com jshumaker@leehayes.com brianm@leehayes.com

Google Inc. v. Summit 6 LLC