Pacsgear, Inc.v.Sorna Corporation

Patent Trial and Appeal Board

May 4, 2015

09753792 (P.T.A.B. May. 4, 2015)

Trials@uspto.gov Paper 20
571-272-7822 Entered: May 4, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

PACSGEAR, INC., PERCEPTIVE SOFTWARE, LLC,
LEXMARK INTERNATIONAL TECHNOLOGY, S.A.,
LEXMARK INTERNATIONAL, INC., and
PERCEPTIVE SOFTWARE USA, INC.,
Petitioner,

v.

SORNA CORPORATION,
Patent Owner.
____________

Case IPR2015-00037
Patent 7,965,408 B2

Before MICHAEL R. ZECHER, J. JOHN LEE, and MINN CHUNG,
Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

DECISION
Termination of the Proceeding
37 C.F.R. §§ 42.72, 42.74

IPR2015-00037
Patent 7,965,408 B2

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I. DISCUSSION
On May 1, 2015, the parties filed a Joint Motion to Terminate this
proceeding (Paper 18), along with an agreement to terminate executed by
counsel of record (Ex. 2002). After reviewing these documents, we
informed the parties via email correspondence that, although the agreement
to terminate references a settlement agreement reached by the parties, it was
not a true copy of the settlement agreement as required by 37 C.F.R.
§ 42.74(b). We also noted that the agreement to terminate was executed by
counsel of record—not the parties themselves. We instructed the parties to
file a true copy of the settlement agreement by mid-day May 4, 2015, and, if
they so choose, a request to treat the settlement agreement as business
confidential information under 37 C.F.R. § 42.74(c). Later in the evening on
May 1, 2015, the parties complied with our instructions by filing a true copy
of the settlement agreement (Ex. 2003),
1
along with a request (Paper 19) to
treat the settlement agreement as business confidential information under
37 C.F.R. § 42.74(c).
This proceeding is still in its preliminary stages. Although Patent
Owner, Sorna Corporation (“Sorna”), timely filed a Preliminary Response,
we have not yet entered a decision whether or not to institute an inter partes
review. In the Joint Motion to Terminate this proceeding, the parties
represent that the related district court case involving U.S. Patent No.
7,965,408 B2 (“the ’408 patent”) has been dismissed with prejudice.
Paper 18, 4. The parties further represent that there are no other proceedings

1
The parties originally numbered the true copy of the settlement agreement
as Exhibit 2002. To avoid confusing the agreement to terminate executed by
counsel of record with the true copy of the settlement agreement, we
renumbered the true copy of the settlement agreement as Exhibit 2003.
IPR2015-00037
Patent 7,965,408 B2

3
involving the ’408 patent. See id. at 5. Under these circumstances, we
determine that it is appropriate to terminate this proceeding without
rendering any further decisions. See 37 C.F.R. § 42.72.

II. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the request to treat the settlement agreement
(Ex. 2003) as business confidential information under 37 C.F.R. § 42.74(c)
is GRANTED; and
FURTHER ORDERED that the parties’ Joint Motion to
Terminate this proceeding is GRANTED, and this proceeding is hereby
terminated.
IPR2015-00037
Patent 7,965,408 B2

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For PETITIONER:
Willmore F. Holbrow, III
Matt N. Nicholson
Blakely, Sokoloff, Taylor & Zafman
Bill_Holbrow@bstz.com
Matt_Nicholson@bstz.com

For PATENT OWNER:
Alexander J. Farrell
F.S. Farrell, LLC
alexander@fsfarrell.com

Richard E. Billion
Billion & Armitage
rbillion@billionarmitage.com