Nintendo of America Inc.v.Motion Games, LLC

Patent Trials and Appeals Board

Jan 15, 2015

11186898 - (D) (P.T.A.B. Jan. 15, 2015)

Trials@uspto.gov Paper 48
Tel: 571-272-7822 Entered: January 15, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
NINTENDO OF AMERICA INC.,
Petitioner
v.
MOTION GAMES, LLC,
Patent Owner.
_______________

IPR2014-00165 (Patent 7,756,297 B2)
IPR2014-00166 (Patent 7,843,429 B2)
_______________

Before MEREDITH C. PETRAVICK, BRYAN F. MOORE, and
TRENTON A. WARD, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION
Motion to Terminate
37 C.F.R. § 42.72

INTRODUCTION
During a call on January 14, 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. That same day, the parties filed a
IPR2014-00165 (Patent 7,756,297 B2)
IPR2014-00166 (Patent 7,843,429 B2)

2
corrected joint motion to terminate the instant proceeding (Paper 45),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.
2011). The parties also filed a corrected joint request to treat the settlement
agreement as business confidential information. Paper 46. 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 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
45, 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. 2011. The motion indicates that the parties also reached an
agreement to dismiss the related district court case between the parties.

1 For expediency, IPR2014-00165 is representative and all subsequent
citations are to IPR2014-00165 unless otherwise noted.
IPR2014-00165 (Patent 7,756,297 B2)
IPR2014-00166 (Patent 7,843,429 B2)

3
Paper 45. In these proceedings, the parties’ joint motions to terminate were
filed prior to the oral argument and the Board has not made a final decision
on the merits in either case. Under these circumstances, we determine that it
is appropriate to terminate these two 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.

PETITIONER:
Joseph Presta
Barry Coyne
jsp@nixonvan.com
bcoyne@reedsmith.com

PATENT OWNER:
Jeffrey B. Vockrodt
Richard S. Meyer
jvockrdot@hunton.com
rmeyer@bsfllp.com