Sony Corporationv.UChicago Argonne, LLC

Patent Trial and Appeal Board

Nov 6, 2015

09887842 (P.T.A.B. Nov. 6, 2015)

Trials@uspto.gov Paper No. 13
571-272-7822 Entered: November 6, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SONY CORPORATION,
Petitioner,

v.

UCHICAGO ARGONNE, LLC,
Patent Owner.
____________

Case IPR2015-01520 (Patent 6,677,082 B2)
Case IPR2015-01521 (Patent 6,680,143 B2)
1

____________

Before GRACE KARAFFA OBERMANN, JO-ANNE M. KOKOSKI, and
MICHELLE N. ANKENBRAND, Administrative Patent Judges.

ANKENBRAND, Administrative Patent Judge.

ORDER
Dismissing the Petition Pursuant to Settlement
37 C.F.R. §§ 42.71(a), 42.74

1
This Order addresses issues common to both cases; therefore, we issue a
single order to be entered in each case. The parties are authorized to use this
style heading when filing an identical paper in both proceedings, provided
that such heading includes a footnote attesting that “the word-for-word
identical paper is filed in each proceeding identified in the heading.”
IPR2015-01520 (Patent 6,677,082 B2)
IPR2015-01521 (Patent 6,680,143 B2)

2

On November 4, 2015, pursuant to Board authorization, Petitioner and
Patent Owner filed a joint motion to terminate each proceeding identified in
the caption under 35 U.S.C. § 317(a). Paper 9.
2
Along with the motion, the
parties filed a copy of a document they describe as their written settlement
agreement (Paper 9, 1; Ex. 1031), as well as a separate joint request to treat
the settlement agreement as business confidential information. Paper 10; see
37 C.F.R. § 42.74(c) (a party to a settlement may request that the settlement
agreement be treated as business confidential and be kept separate from the
patent file).
The cases are in a preliminary stage. The Board has not yet issued
decisions on whether to institute the proceedings. The parties state in the
joint motion that they have settled their dispute and have reached agreement
to terminate these inter partes reviews, as well as related ITC and district
court litigation. Paper 9, 1–3. We are persuaded that, under these
circumstances, it is appropriate to dismiss the Petition in each proceeding.
37 C.F.R. § 42.71(a). This Order does not constitute a final written decision
pursuant to 35 U.S.C. § 318(a).

It is therefore
ORDERED that the joint motion is granted and the Petition is
dismissed in each proceeding; and

2
The parties filed substantially similar papers and exhibits in each
proceeding. Citations are to IPR2015-01520 as representative unless
otherwise indicated.
IPR2015-01520 (Patent 6,677,082 B2)
IPR2015-01521 (Patent 6,680,143 B2)

3

FURTHER ORDERED that the joint request that the settlement
agreement be treated as business confidential information, to be kept
separate from the patent file, is granted in each proceeding.

IPR2015-01520 (Patent 6,677,082 B2)
IPR2015-01521 (Patent 6,680,143 B2)

4

FOR PETITIONER:
Lionel M. Lavenue
Maximilienne Giannelli
Joshua L. Goldberg
Hojung Cho
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
lionel.lavenue@finnegan.com
maximilienne.giannelli@finnegan.com
joshua.goldberg@finnegan.com
hojung.cho@finnegan.com

FOR PATENT OWNER:

Brian E. Ferguson
Anish R. Desai
Weil, Gotshal & Manges LLP
brian.ferguson@weil.com
anish.desai@weil.com