LG Electronics Inc.v.E-Watch Inc.

Patent Trial and Appeal Board

Sep 18, 2015

11617509 (P.T.A.B. Sep. 18, 2015)

Trials@uspto.gov Paper No. 19
571-272-7822 Entered: September 18, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

LG ELECTRONICS, INC.,
Petitioner,

v.

E-WATCH, INC.,
Patent Owner.

Case IPR2015-00404 (Patent 7,365,871B2)
Case IPR2015-00408 (Patent 7,643,168 B2)
1

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

PER CURIAM,

AMENDED DECISION
Joint Motion to Terminate
37 C.F.R. § 42.74

1
This order addresses issues that are the same in all cases. We exercise our
discretion to issue one order to be filed in each case. The parties, however,
are not authorized to use this style heading in subsequent papers.
IPR2015-00404 (Patent 7,365,871 B2)
IPR2015-00408 (Patent 7,643,168 B2)

On September 11, 2015, the parties filed a “Joint Motion to
Terminate” based on a settlement agreement that resolves the parties’
disputes related to the challenged patent. Paper 18.
2
The parties
concurrently filed a copy of the settlement agreement (Ex. 1027). The Joint
Motion to Terminate also requested that Exhibit 1027 be “treated as
confidential business information and kept separate from the files of the
involved patent.” Paper 18, 3; 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.”).
We granted the Joint Motion to Terminate in our Decision dated
September 17, 2015. However, that Decision states incorrectly that we have
not yet instituted trial when we have. See Decision on Institution (Paper 12
in IPR2015-00404 and Paper 12 in IPR2015-00408). We also cited to 37
C.F.R. §§ 42.71(a) regarding dismissing the Petition when, as discussed
above, trial was instituted. This Amended Decision corrects those errors.
We have not yet entered a final decision. Under these circumstances,
we determine that it is appropriate to terminate the trial. See 37 C.F.R. §§
42.5(a), 42.72. This paper does not constitute a final written decision
pursuant to 35 U.S.C. § 318(a).
ORDER
Accordingly, it is
ORDERED that the Joint Motion to Terminate is granted pursuant to
this Amended Decision; and

2
All citations are to the filings in IPR2015-00404, unless otherwise noted.
IPR2015-00404 (Patent 7,365,871 B2)
IPR2015-00408 (Patent 7,643,168 B2)

FURTHER ORDERED that, pursuant to the Decision (Paper 19 in
IPR2015-00404 and Paper 18 in IPR2015-00408), the settlement agreement
(Exhibit 1027 in IPR2015-00404 and Exhibit 1029 in IPR2015-00408) 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.
IPR2015-00404 (Patent 7,365,871 B2)
IPR2015-00408 (Patent 7,643,168 B2)

For PETITIONER:

David L. Witcoff
Richard J. Johnson
Matthew W. Johnson
JONES DAY
dlwitcoff@jonesday.com
jjohnson@jondesday.com
mwjohnson@jonesday.com

For PATENT OWNER:

Robert C. Curfiss
bob@curfiss.com

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