Sony Network Entertainment International LLCv.William Grecia

Patent Trial and Appeal Board

May 15, 2015

13740086 (P.T.A.B. May. 15, 2015)

Trials@uspto.gov
571-272-7822
Paper No. 13
Date Entered: May 15, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SONY NETWORK ENTERTAINMENT INTERNATIONAL LLC,
Petitioner,

v.

WILLIAM GRECIA,
Patent Owner.
____________

Case IPR2015-00422
Patent 8,533,860 B1
____________

Before GLENN J. PERRY, RAMA G. ELLURU, and JASON J. CHUNG,
Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

JUDGMENT
Dismissing the Petition
37 C.F.R. §§ 42.5(a), 42.71(a)
IPR2015-00422
Patent 8,533,860 B1

2

On May 13, 2015, Patent Owner William Grecia (“Grecia”) and Petitioner
Sony Network Entertainment International LLC (“Sony”) filed a Joint Motion to
Terminate Proceeding under 35 U.S.C. § 317(a) (Paper 11), a true copy of the
written settlement agreement (Ex. 1011), and a Joint Request to File Settlement
Agreement as Business Confidential Information and to keep separate the
agreement pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74 (Paper 12). Sony
filed a Petition for an inter partes review of U.S. Patent No. 8,533,860 on
December 11, 2014, and Grecia filed a Preliminary Response on March 11, 2015.
The Board has not yet determined, under 35 U.S.C. § 314, whether or not to
institute a review in the instant case. As no trial has been instituted based on
Sony’s Petition, this matter is in the preliminary proceeding1 stage.
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 the patent owner, unless the Office has decided the merits of the
proceeding before the request for termination is filed.”
Generally, the Board expects that a proceeding will terminate as to settling
parties after the filing of a settlement agreement. See, e.g., Office Patent Trial
Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012).
The Board is persuaded that, under these circumstances, it is appropriate to
terminate this case. See 37 C.F.R. §§ 42.5(a), 42.71(a).
Accordingly, it is:
ORDERED that the joint motion to terminate with respect to both parties is
GRANTED, and the Petition is hereby dismissed; and

1 A preliminary proceeding begins with the filing of a petition for instituting a trial
and ends with a written decision as to whether trial will be instituted. 37 C.F.R. §
42.2.
IPR2015-00422
Patent 8,533,860 B1

3

FURTHER ORDERED that the parties’ joint request that the written
settlement agreement (Ex. 1011) be: (i) treated as business confidential
information; (ii) kept separate from the file of the ’860 patent; (iii) kept
confidential from any third party; and (iv) made available only to Federal
Government agencies on written request, or to any person on a showing of good
cause, under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is
GRANTED.

For Petitioner:

Paul C. Haughey
Scott Kolassa
KILPATRICK TOWNSEND & STOCKTON LLP
phaughey@kilpatricktownsend.com
skolassa@kilpatricktownsend.com

For Patent Owner:

Patrick Richards
Alisha Taylor
RICHARDS PATENT LAW P.C.
Patrick@richardspatentlaw.com
alisha@richardspatentlaw.com