Sony Corporation of Americav.Chen-Jean Chou

Patent Trial and Appeal Board

Dec 8, 2014

11754268 (P.T.A.B. Dec. 8, 2014)

Trials@uspto.gov Paper 9
571-272-7822 Entered: December 8, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SONY CORPORATION OF AMERICA,
Petitioner,

v.

CHEN-JEAN CHOU,
Patent Owner.
____________

Case IPR2014-01268
Patent 7,612,843 B2

Before JUSTIN T. ARBES, BRYAN F. MOORE, and
PATRICK R. SCANLON, Administrative Patent Judges.

SCANLON, Administrative Patent Judge.

JUDGMENT
Termination of Proceeding
37 C.F.R. § 42.72
IPR2014-01268
Patent 7,612,843 B2

2

On November 18, 2014, the parties filed a Joint Motion to Terminate
Proceeding Pursuant to 35 U.S.C. § 317 (Paper 6) and a Joint Request to File
Settlement Agreement as Business Confidential Information under 35 U.S.C.
§ 317 (Paper 7). The Joint Motion to Terminate Proceeding is accompanied
by a copy of a settlement agreement styled “Term Sheet” and filed as Exhibit
1010. The parties represent that the Term Sheet is a true and correct copy of
their agreement. Paper 6, 2. The Board retroactively authorized the filing of
these papers via e-mail on November 21, 2014.
The Board authorized, via e-mail, the parties to file a license agreement,
which the parties were contemplating executing, on November 28, 2014. On
December 2, 2014, the parties filed a copy of their Confidential Settlement
and License Agreement (Ex. 1011) and a Joint Request to File Settlement
Agreement as Business Confidential Information under 35 U.S.C. § 317
(Paper 8).
The instant proceeding is still in the preliminary proceeding stage.
Patent Owner has not yet filed a preliminary response, and we have not yet
determined whether to institute an inter partes review. The parties indicate
that they have settled their dispute and have reached agreement to terminate
this inter partes review. Paper 6, 1–2. We have reviewed Exhibits 1010 and
1011 and determine that, under the present circumstances, it is appropriate to
enter judgment1 and terminate the proceeding without rendering a final written
decision under 37 C.F.R. § 42.72.

1 A judgment means a final written decision by the Board, or a termination of
a proceeding. 37 C.F.R. § 42.2.
IPR2014-01268
Patent 7,612,843 B2

3

In consideration of the foregoing, it is hereby:
ORDERED that the joint motion to terminate the proceeding is granted;
FURTHER ORDERED that the proceeding is terminated; and
FURTHER ORDERED the joint requests that the Term Sheet (Ex.
1010) and the Confidential Settlement and License Agreement (Ex. 1011) be
treated as business confidential information and be kept separate from the file
of the involved patent pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
§ 42.74(c) are granted.
IPR2014-01268
Patent 7,612,843 B2

4

PETITIONERS:

Lewis Popovski
Paul Qualey
KENYON & KENYON LLP
lpopovski@kenyon.com
pqualey@kenyon.com

PATENT OWNER:

Mark W. Handley
HANDLEY LAW FIRM, PLLC
docket@iplaw.pro