Sony Corporationv.Tessera, Inc.Download PDFPatent Trial and Appeal BoardDec 20, 201308989710 (P.T.A.B. Dec. 20, 2013) Copy Citation Trials@uspto.gov Paper 46 571-272-7822 Date: December 20, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ SONY CORPORATION Petitioner v. TESSERA, INC. Patent Owner ____________ Case IPR2012-00033 Patent 6,054,337 ____________ Before MICHAEL P. TIERNEY, RAMA G. ELLURU, and TREVOR M. JEFFERSON, Administrative Patent Judges. TIERNEY, Administrative Patent Judge. JUDGMENT Termination of the Proceeding 37 C.F.R. § 42.73 IPR2012-00033 Patent 6,054,337 2 The parties have requested that this trial proceeding be terminated pursuant to a settlement agreement. On November 15, 2013, the Board authorized the parties to file a joint request to terminate the proceeding and to file the settlement agreement as business confidential under 37 C.F.R. 42.74(c). Paper 39. The parties have now filed a joint motion to terminate, Paper 40, and a motion to treat the settlement agreement as business confidential, Paper 41. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. With their motion to terminate and to treat the settlement agreement as business confidential, the parties also filed a copy of a written settlement agreement, Exhibit 2046. A decision by the Board to institute a trial was entered on February 26, 2013. Paper 14. Although a patent owner response has been filed, Paper 24, in this case, no final hearing has been held. Both Sony and Renesas are joint defendants in a related district court case. Paper 40 at 2. Patent Owner Tessera and Sony have now entered into a global settlement, and only Renesas will remain as a defendant in the district court action. Renesas could have, but did not, file a petition for inter partes review of the ’337 patent and motion for joinder, in order to join this review. Under these circumstances, the Board grants the joint motion to enter judgment and terminate the trial without rendering a final written decision. 37 C.F.R. § 42.72. It is, therefore, ORDERED that the joint motion to terminate the trial is GRANTED and the trial is hereby terminated; FURTHER ORDERED that the parties’ joint request that the settlement agreement be treated as business confidential information and kept separate from IPR2012-00033 Patent 6,054,337 3 the file of the involved patent under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is GRANTED. IPR2012-00033 Patent 6,054,337 4 For Petitioner: Matthew A. Smith Turner Boyd LLP smith@turnerboyd.com Andrew Cheslock Foley & Lardner LLP acheslock@foley.com For Patent Owner: Jon E. Wright Robert Greene Sterne Jason Eisenberg Sterne Kessler Goldstein & Fox, PLLC jwright-PTAB@skgf.com rsterne-PTAB@skgf.com jasone-PTAB@skgf.com Jason Sheasby H. Annita Zhong IRELL & MANELLA LLP jsheasby@irell.com hzhong@irell.com Copy with citationCopy as parenthetical citation
