Wintek Corporation v TPK Touch Solutions Inc.

Patent Trial and Appeal Board

Dec 3, 2014

11842747 (P.T.A.B. Dec. 3, 2014)

Trials@uspto.gov Paper 55
Tel: 571-272-7822 Entered: December 3, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
WINTEK CORPORATION,
Petitioner,
v.
TPK TOUCH SOLUTIONS,
Patent Owner.
_______________

Case IPR2013-00568
Patent 8,217,902 B2
_______________

Before TONI R. SCHEINER, JOSIAH C. COCKS, and
RICHARD E. RICE, Administrative Patent Judges.

COCKS, Administrative Patent Judge.

DECISION
Termination of the Proceeding
35 U.S.C. § 317 and 37 C.F.R. § 42.72

IPR2013-00568
Patent 8,217,902 B2

2

On November 25, 2014, Petitioner, Wintek Corporation, and Patent
Owner, TPK Touch Solutions, Inc. (collectively referred to as “the Parties”)
filed a joint motion to terminate this inter partes review involving U.S.
Patent 8,217,902. Paper 53 (“Joint Motion to Terminate”); see 35 U.S.C
§ 317; 37 C.F.R. § 42.72. Authorization to file the motion was given via e-
mail correspondence from Board personnel on November 21, 2014. Along
with the Joint Motion to Terminate, the Parties filed a true copy of their
written settlement agreement (Ex. 2029), as well as a joint request (Paper
54) to have their settlement agreement treated as business confidential
information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
The Parties state in their Joint Motion to Terminate:
The parties respectfully submit that termination is
appropriate because Patent Owner has agreed to license U.S.
Patent No. 8,217,902 to Petitioner (see Settlement Agreement
§ 2.1), the parties have settled all disputes with respect to U.S.
Patent No. 8,217,902 and the parties have agreed to terminate
this inter partes review. No public interest or other factors
militate against termination of this proceeding.

Paper 53, 2.
The parties also state that “Patent Owner represents that it does not
contemplate initiating any proceedings involving U.S. Patent No. 8,217,902
in the foreseeable future, either against Petitioner or any third party.” Id.
The Parties further state that they have agreed to dismiss with prejudice
litigation relating to U.S. Patent 8,217,902 styled TPK Touch Solutions Inc.
v. Wintek Corp., Civ. A. No. 3:13-CV-02218-VC (N.D. Cal.). Id. at 1.
The Parties are reminded that the Board is not a party to the
settlement, and may identify independently any question of patentability.
IPR2013-00568
Patent 8,217,902 B2

3

37 C.F.R. § 42.74(a). Generally, however, the Board expects that a
proceeding will terminate 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).
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.” The
requirement for terminating review with respect to Wintek is met.
Furthermore, under 35 U.S.C. § 317(a), “[i]f no petitioner remains in the
inter partes review, the Office may terminate the review or proceed to a
final written decision under section 318(a).” Wintek is the sole petitioner in
this review. The Board has discretion to terminate this review with respect
to TPK.
Upon consideration of the circumstances of this case, the panel has
determined to terminate this inter partes review as to both Wintek and TPK
without rendering a final written decision. The oral argument scheduled for
December 12, 2014 is cancelled.
TPK’s Motion to Seal (Paper 29) is pending. Because this proceeding
is terminated without rendering a final written decision, the Motion to Seal is
dismissed as moot. The subject paper (Ex. 2019) of the Motion to Seal is
hereby expunged.
It is
ORDERED that, as was requested timely by the Parties (Paper 54),
the settlement agreement (Paper 2029) will be treated as business
confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c);
IPR2013-00568
Patent 8,217,902 B2

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FURTHER ORDERED that TPK’s Motion to Seal (Paper 29) is
dismissed as moot;
FURTHER ORDERED that Exhibit 2019 is hereby expunged;
FURTHER ORDERED that the oral argument scheduled for
December 12, 2014 is cancelled; and
FURTHER ORDERED that the joint motion to terminate IPR2013-
00568 is granted and this proceeding is hereby terminated.

PETITIONER:

Joseph E. Palys
Naveen Modi
PAUL HASTINGS LLP
josephpalys@paulhastings.com
naveenmodi@paulhastings.com

PATENT OWNER:

Joseph J. Richetti
BRYAN CAVE LLP
joe.richetti@bryancave.com

David Bilsker
QUINN EMANUEL URQUHART & SULLIVAN, LLP
davidbilsker@quinnemanuel.com