Koninklijke Philips N.V.v.iLumisys, Inc.

Patent Trial and Appeal Board

Feb 10, 2015

11925037 (P.T.A.B. Feb. 10, 2015)

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