Ventana 3D, LLCv.Hologram USA, Inc.

Patent Trial and Appeal Board

Feb 2, 2016

08836911 (P.T.A.B. Feb. 2, 2016)

Trials@uspto.gov Paper 9
571-272-7822 Entered: February 2, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

VENTANA 3D, LLC,
Petitioner,

v.

HOLOGRAM USA, INC.,
Patent Owner.
____________

Case IPR2016-00133
Patent 5,865,519
____________

Before JAMESON LEE, JUSTIN BUSCH, and
MICHELLE N. WORMMEESTER, Administrative Patent Judges.

LEE, Administrative Patent Judge.

ORDER
Granting Joint Motion to Terminate Proceeding
37 C.F.R. §§ 42.5, 42.71(a), 42.74

On January 12, 2016, the parties filed a Joint Motion to Terminate
Proceeding (“Motion”). Paper 7. The Motion states: “The parties have
resolved their dispute over the ’519 Patent in this proceeding and in the
Related Litigation.” Id. at 2. The Motion also represents the related
litigation has been dismissed by the District Court. Id. at 1.
IPR2016-00133
Patent 5,865,519

2

With their Motion, the parties filed what they refer to as “a true copy
of the written Confidential Settlement Agreement (Exhibit 2001) resolving
the dispute with respect to the ’519 patent in the above-captioned inter
partes review and in the Related Litigation.” Id. at 5. The parties also filed
a “Joint Request to File Settlement Agreement as Business Confidential
Information Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c)”
(“Joint Request”), requesting that Exhibit 2001 be filed “under seal” and be
kept separate from the file of the involved patent. Paper 8.
This proceeding is at an early stage, and no decision on whether to
institute inter partes review has been made. The parties have settled their
dispute with regard to U.S. Patent No. 5,865,519. Under these
circumstances, we determine that it is appropriate to terminate this
proceeding.
With regard to the Joint Request, it is not clear what the parties mean
by the language “under seal.” A request under 37 C.F.R. § 42.74(c) to have
a filed settlement agreement treated as business confidential information is
not the same as a typical motion to seal. The Joint Request is granted to the
extent that it requests treatment expressly provided in 37 C.F.R.
§ 42.74(c)(1) and 37 C.F.R. § 42.74(c)(2), but otherwise denied.
Accordingly, it is
ORDERED that the Joint Motion to Terminate Proceeding is granted;
and
FURTHER ORDERED that the Joint Request to File Settlement
Agreement as Business Confidential Information Pursuant to 35 U.S.C.
§ 317(b) and 37 C.F.R. § 42.74(c) is granted, and that 37 C.F.R.
§§ 42.74(c)(1) and (c)(2) apply to govern the terms of accessibility.
IPR2016-00133
Patent 5,865,519

3

Petitioner:
James Behmke
James.behmke@piblaw.com

Patent Owner:
May Chan
mchan@bakermarquart.com