Koninklijke Philips N.V.v.iLumisys, Inc.Download PDFPatent Trial and Appeal BoardFeb 10, 201511007417 (P.T.A.B. Feb. 10, 2015) Copy Citation Trials@uspto.gov IPR2014-01120 Paper 12 571-272-7822 IPR2014-01333 Paper 12 IPR2014-00448 Paper 25 IPR2014-00710 Paper 26 Entered: February 10, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ PHILIPS ELECTRONICS NORTH AMERICA CORP. and KONINKLIJKE PHILIPS N.V., Petitioners, v. ILUMISYS, INC., Patent Owner. Case IPR2014-01120 Patent 8,382,327 B2 Case IPR2014-01333 Patent 7,049,761 B2 Case IPR2014-00448 Patent 8,093,823 B1 Case IPR2014-00710 Patent 7,510,299 C3 Before HOWARD B. BLANKENSHIP, BRYAN F. MOORE, and BARBARA A. BENOIT Administrative Patent Judges. MOORE, Administrative Patent Judge. DECISION Motion to Terminate 37 C.F.R. § 42.72 IPR2014-01120 Patent 8,382,327 B2 IPR2014-01333 Patent 7,049,761 B2 IPR2014-00448 Patent 8,093,823 B1 IPR2014-00710 Patent 7,510,299 C3 2 INTRODUCTION During a call on January 20, 2015, the Board authorized the parties to file motions to terminate the instant proceedings, as well as authorized the parties to file joint requests that the settlement agreements be treated as business confidential information. On January 22, the parties filed a joint motion to terminate the instant proceeding (Paper 10),1 along with, what they describe as a true copy of their written settlement agreement, made in connection with the termination of the instant proceeding (Ex. 2001). The parties also filed a joint request to treat the settlement agreement as business confidential information. Paper 11. For the reasons set forth below, the motions and requests are granted. DISSCUSION 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.” See 37 C.F.R. § 42.72. The parties are reminded that the Board is not a party to the settlement, and may independently identify any question of patentability. 37 C.F.R § 42.74(a). Generally, however, the Board expects that a proceeding will terminate after the filing of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 1 For expediency, IPR2014-01120 is representative and all subsequent citations are to IPR2014-01120 unless otherwise noted. IPR2014-01120 Patent 8,382,327 B2 IPR2014-01333 Patent 7,049,761 B2 IPR2014-00448 Patent 8,093,823 B1 IPR2014-00710 Patent 7,510,299 C3 3 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). The parties’ joint motions state that they settled their dispute and move to terminate these proceedings, pursuant to 35 U.S.C. § 317(a). Paper 10, 2–3. The parties filed what they describe as a true copy of their written settlement agreement, made in connection with the termination of the instant proceeding. Ex. 2001. The motion indicates that the parties also reached an agreement to dismiss the related district court case between the parties. Paper 10, 3. In these proceedings, the parties’ joint motions to terminate were filed prior to the oral arguments and the Board has not made a final decision on the merits in any of the four cases. Under these circumstances, we determine that it is appropriate to terminate these four proceedings with respect to all parties. CONCLUSION It is: ORDERED that the joint motions to terminate these proceedings are GRANTED, and these proceedings are, hereby, terminated; and FURTHER ORDERED that the parties’ joint requests that the settlement agreements be treated as business confidential information and kept separate from the file of the involved patent under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is GRANTED. IPR2014-01120 Patent 8,382,327 B2 IPR2014-01333 Patent 7,049,761 B2 IPR2014-00448 Patent 8,093,823 B1 IPR2014-00710 Patent 7,510,299 C3 4 PETITIONERS: John Salazar jsalazar@middletonlaw.com Scott Higdon shigdon@middletonlaw.com Robert Theuerkauf rtheuerkauf@middletonlaw.com PATENT OWNER: Chris Bowley ccb@fr.com Nadine Mustafa mustafa@youngbasile.com Copy with citationCopy as parenthetical citation