Honda Tsushin Kogyo Co., Ltd.v.Advanced Connection Technology Inc.

Patent Trial and Appeal Board

Jun 20, 2014

11015856 (P.T.A.B. Jun. 20, 2014)

Trials@uspto.gov Paper 24
Tel: 571-272-7822 Entered: June 20, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
HONDA TSUSHIN KOGYO CO., LTD.
Petitioner
v.
ADVANCED CONNECTION TECHNOLOGY INC.
Patent Owner
_______________

Case IPR2013-00520
Case IPR2014-00307
Patent 7,128,617 B2
_______________

Before HOWARD B. BLANKENSHIP, KARL D. EASTHOM, and
BARBARA A. BENOIT, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

JUDGMENT
Termination of the Proceedings
1

37 C.F.R. §§ 42.72, 42.73, 42.74

1
This Judgment (by termination) will be entered in both proceedings.
Cases IPR2013-00520, IPR2014-00307
Patent 7,128,617 B2

2

On June 13, 2014, in each of the above-listed related proceedings, which
involve challenges to U.S. Patent No. 7,128,617 B2 (“the ’617 Patent”), the parties
filed a joint motion to terminate the respective proceeding, along with a true copy
of their written settlement agreement, made in connection therewith, in accordance
with 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b). Paper 21 (attaching Ex. 1018,
written settlement agreement).
2
The parties also filed a joint motion in each case to
treat the settlement agreement as confidential business information under 35
U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 22.
In each case, the joint motion to terminate states that the parties jointly
request termination of the proceeding and that termination is proper because the
proceeding is at a preliminary stage. See Paper 21. We recently instituted trial in
IPR2013-00520 (on February 14, 2014), and the IPR2014-00307 is still in the pre-
institution stage. The motions also indicate that the agreement requires dismissal
of a related district court lawsuit involving the ’617 Patent, in which a named real
party-in-interest here is a defendant there. That related lawsuit has been dismissed.
See Paper 21, 1–2 (discussing related district court lawsuits). At this preliminary
stage in each proceeding, the record lacks full briefing on the trial issues, rendering
unripe a final written decision.
Based on the foregoing, the record warrants entering judgment by
terminating the proceeding without rendering a final written decision. See 35
U.S.C. § 317(a); 37 C.F.R. §§ 42.72 (termination), 42.73 (judgment generally),

2
Unless otherwise noted, record citations refer to the representative IPR2013-
00520 proceeding. The parties filed substantively similar motions and a settlement
agreement in IPR2014-00307. See IPR2014-00307, Papers 11, 12, Ex. 1015.
Cases IPR2013-00520, IPR2014-00307
Patent 7,128,617 B2

3

42.74 (settlement). A judgment “means a final written decision by the Board, or a
termination of a proceeding.” 37 C.F.R. § 42.2.
3

It is
ORDERED that the joint motions to terminate IPR2013-00520 and
IPR2014-00307 are granted;
FURTHER ORDERED that the two proceedings are terminated; and
FURTHER ORDERED that the parties’ joint requests in IPR2013-00520
and IPR2014-00307, that the settlement agreements be treated as business
confidential information, kept separate from the patent files, and made 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), are granted.

3
This Judgment renders moot a decision on any other pending motions, or requests
to file motions, including, in IPR2014-00307, Patent Owner’s motion for pro hac
vice admission and Petitioner’s request to file a motion for joinder. See IPR2014-
00307, Papers 8, 9.
Cases IPR2013-00520, IPR2014-00307
Patent 7,128,617 B2

4

FOR PETITIONER:

Ralph Gabric
rgabric@brinkshofer.com

Tadashi Horie
thorie@brinkshofer.com

FOR PATENT OWNER:

Jing Cherng
gcherng@mount.com