Samsung Electronics Co., Ltd.v.e-Watch, Inc.

Patent Trial and Appeal Board

Sep 21, 2015

11617509 (P.T.A.B. Sep. 21, 2015)

Trials@uspto.gov Paper 11
571-272-7822 Entered: September 21, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SAMSUNG ELECTRONICS CO., LTD.
and SAMSUNG ELECTRONICS AMERICA, INC.,
Petitioner,

v.

E-WATCH, INC.,
Patent Owner.

IPR2015-00607 (Patent 7,643,168 B2)
IPR2015-00610 (Patent 7,365,871 B2)
1

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

CLEMENTS, Administrative Patent Judge.

DECISION
Joint Motion to Terminate
35 U.S.C. § 317; 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.
IPR2015-00607 (Patent 7,643,168 B2)
IPR2015-00610 (Patent 7,365,871 B2)

2
On September 17, 2015, Petitioner Samsung Electronics Co., Ltd. and
Samsung Electronics America, Inc. (“Petitioner”) and Patent Owner
e-Watch, Inc. and e-Watch Corporation (“Patent Owner”) filed a “Joint
Motion to Terminate” based on a settlement agreement that resolves the
parties’ disputes related to the challenged patents. Paper 9.
2
The parties
concurrently filed a copy of the settlement agreement between Petitioner and
Patent Owner (Ex. 1017) and a “Joint Request to Treat the Settlement
Agreement as Business Confidential Information Under 35 U.S.C. § 317(b)
and 37 C.F.R. § 42.74(c)” (Paper 10). See 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.”).
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.”
These proceedings are in their early stages. For example, Patent
Owner has not filed a Patent Owner Response. As a result, we have not yet
decided the merits of this proceeding. Under these circumstances, we
determine that it is appropriate to terminate this proceeding as to both
Petitioners and Patent Owner without rendering a final written decision. See
37 C.F.R. §§ 42.72, 42.74.

2
Citations are to the filings in IPR2015-00607, unless otherwise noted.
IPR2015-00607 (Patent 7,643,168 B2)
IPR2015-00610 (Patent 7,365,871 B2)

3
ORDER
Accordingly, it is
ORDERED that the Joint Motion to Terminate is granted; and
FURTHER ORDERED that the settlement agreements (Exhibit 1017
in IPR2015-0607 and Exhibit 1012 in IPR2015-00610) 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.
IPR2015-00607 (Patent 7,643,168 B2)
IPR2015-00610 (Patent 7,365,871 B2)

4
For PETITIONER:

Steven L. Park
Naveen Modi
PAUL HASTINGS LLP
stevenpark@paulhastings.com
naveenmodi@paulhastings.com

For PATENT OWNER:

Robert C. Curfiss
bob@curfiss.com

David O. Simmons
dsimmons1@sbcglobal.net