HTC Corporationv.E-Watch Inc.

Patent Trial and Appeal Board

Sep 17, 2015

11617509 (P.T.A.B. Sep. 17, 2015)

Trials@uspto.gov Paper 31
571-272-7822 Entered: September 17, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

HTC CORPORATION, HTC AMERICA, INC.,
SAMSUNG ELECTRONICS LTD., and
SAMSUNG ELECTRONICS AMERICA, INC.,
Petitioner,

v.

E-WATCH, INC. and E-WATCH CORPORATION,
Patent Owner.

IPR2014-00987 (Patent 7,365,871 B2)
1

IPR2014-00989 (Patent 7,643,168 B2)
2,3

Before JAMESON LEE, GREGG I. ANDERSON, and
MATTHEW R. CLEMENTS, Administrative Patent Judges.

CLEMENTS, Administrative Patent Judge.

DECISION
Joint Motion to Terminate
37 C.F.R. § 42.5(a), 42.71(a)

1
Case IPR2015-00541 has been joined with this proceeding.
2
Case IPR2015-00543 has been joined with this proceeding.
3
This order addresses an issue that is identical in both cases. Therefore, we
exercise discretion to issue one order to be filed in each of the two cases.
The parties, however, are not authorized to use this style heading.
IPR2014-00987 (Patent 7,365,871 B2)
IPR2014-00989 (Patent 7,643,168 B2)

2
On September 11, 2015, Petitioner HTC Corporation and HTC
America, Inc. (“HTC”) and Petitioner Samsung Electronics Co., Ltd. and
Samsung Electronics America, Inc. (“Samsung”) (collectively, “Petitioners”)
and Patent Owner e-Watch, Inc. and e-Watch Corporation (“e-Watch) filed a
“Joint Motion to Terminate” based on a settlement agreement that resolves
the parties’ disputes related to the challenged patent. Paper 31.
4
The parties
concurrently filed a copy of the settlement agreement between HTC and e-
Watch (Ex. 1013) and a copy of the settlement agreement between Samsung
and e-Watch (Ex. 1014), along with a “Joint Request to Treat the Settlement
Agreements as Business Confidential Information Under 35 U.S.C. § 317(b)
and 37 C.F.R. 42.74(c).” Paper 32; see also 37 C.F.R. § 42.74(c) (“A party
to a settlement may request that the settlement be treated as business
confidential information and be kept separate from the files of an involved
patent or application.”).
Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
this chapter shall be terminated with respect to any petitioner upon the joint
request of the petitioner and patent owner, unless the Office has decided the
merits of the proceeding before the request for termination is filed.”
We have not yet decided the merits of this proceeding. Under these
circumstances, we determine that it is appropriate to terminate this
proceeding as to both Petitioners and Patent Owner without rendering a final
written decision. See 37 C.F.R. § 42.72.

4
Citations are to the filings in IPR2014-00987, unless otherwise noted.
IPR2014-00987 (Patent 7,365,871 B2)
IPR2014-00989 (Patent 7,643,168 B2)

3
ORDER
Accordingly, it is
ORDERED that the Joint Motion to Terminate is granted; and
FURTHER ORDERED that the settlement agreements (Exhibits 1013
and 1014 in IPR2014-00987 and Exhibits 1011 and 1012 in IPR2014-00989)
be treated as business confidential information and be kept separate from the
files of the involved U.S. Patent Nos. 7,635,871 B2 and 7,643,168 B2.
IPR2014-00987 (Patent 7,365,871 B2)
IPR2014-00989 (Patent 7,643,168 B2)

4
For PETITIONER:

Bing Ai
Cheng C. (Jack) Ko
Kevin Patariu
Babak Tehranchi
PERKINS COIE LLP

Steven L. Park
Naveen Modi
Elizabeth Brann
PAUL HASTINGS LLP
stevenpark@paulhastings.com
naveenmodi@paulhastings.com
elizabethbrann@paulhastings.com

For PATENT OWNER:

Robert C. Curfiss
bob@curfiss.com

and

David O. Simmons
IVC Patent Agency
dsimmons1@sbcglobal.net