HTC Corporationv.PatentMarks Communications, LLCDownload PDFPatent Trial and Appeal BoardAug 26, 201411948746 (P.T.A.B. Aug. 26, 2014) Copy Citation Trials@uspto.gov Paper 7 Tel: 571-272-7822 Entered: August 26, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ HTC CORPORATION Petitioner, v. PATENTMARKS COMMUNICATIONS, LLC Patent Owner. ____________ Case IPR2014-00905 Patent 8,400,926 B2 ____________ Before HOWARD B. BLANKENSHIP, GLENN J. PERRY, and GREGG I. ANDERSON, Administrative Patent Judges PERRY, Administrative Patent Judge. JUDGMENT Adverse Judgment and Termination 37 C.F.R. § 42.73 Case IPR2014-00905 Patent 8,400,926 B2 The parties have requested that these trial proceedings be terminated pursuant to a settlement. On August 15, we authorized (Paper 5) the parties to file a joint motion for adverse judgment against Petitioner and to maintain a settlement agreement between Petitioner and Patent Owner as confidential business information. The parties filed a joint motion (Paper 6), pursuant to 37 C.F.R. § 42.73(b)(4), requesting that adverse judgment be entered against Petitioner. Petitioner represents that it is abandoning the contest and will no longer participate in the above-captioned proceeding. The parties have also filed (Exhibit 1016) a copy of a license and settlement agreement granting a license of the patent at issue to Petitioner. The license agreement comprises seven pages and is stamped “CONFIDENTIAL.” The parties have not identified any other USPTO proceedings related to the patent at issue. They have identified other U.S. Patents and pending applications that are related in some way to the patent at issue. They have also identified related litigation pending in the District of Delaware. Paper 4. This inter partes review is in its preliminary stage. A decision on the Petition (Paper 1) has not yet been rendered. Under these circumstances, we determine that it is appropriate to enter an adverse judgment1 as requested and to terminate this proceeding without rendering a final written decision under 37 C.F.R. § 42.72. 1 A judgment means a final written decision by the Board or a termination of a proceeding. 37 C.F.R. § 42.2. Case IPR2014-00905 Patent 8,400,926 B2 ORDER It is, therefore, ORDERED that the joint motion to enter adverse judgment against Petitioner and to terminate this proceeding is GRANTED; and FURTHER ORDERED that the parties’ joint request that the settlement and license agreement be treated as business confidential information and kept separate from the file of the involved patent under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is GRANTED. Case IPR2014-00905 Patent 8,400,926 B2 FOR PETITIONER: Daniel R. McClure McClure, Qualey & Rodack, LLP Dan.mcclure@MQRlaw.com Gregory Ourada Hill, Kertscher & Wharton, LLP go@hkw-law.com FOR PATENT OWNER Abraham Hershkovitz Eugene C. Rzucidlo Hershkovitz & Associates, PLLC AHershkovitz@Hershkovitz.net GRzucidlo@Hershkovitz.net Copy with citationCopy as parenthetical citation
