Apple Inc.v.E-Watch Inc.

Patent Trial and Appeal BoardNov 12, 2015

11617509 (P.T.A.B. Nov. 12, 2015)

Trials@uspto.gov Paper 24 571-272-7822 Entered: November 12, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD APPLE INC., SAMSUNG ELECTRONICS LTD, and SAMSUNG ELECTRONICS AMERICA, INC., Petitioner, v. E-WATCH, INC., Patent Owner. Case IPR2015-004141 Case IPR2015-00611 Patent 7,643,168 B2 Before JAMESON LEE, GREGG I. ANDERSON, and MATTHEW R. CLEMENTS, Administrative Patent Judges. ANDERSON, Administrative Patent Judge. DECISION Joint Motion to Terminate 37 C.F.R. § 42.5(a), 42.71(a) 1 Case IPR2015-00611 has been joined to this proceeding. 2 IPR2015-00414 Patent 7,643,168 B2 On October 9, 2015, pursuant to our authorization (Paper 21), Petitioner Samsung Electronics Ltd. and Samsung Electronics America, Inc. (“Samsung”) and e-Watch, Inc. (“Patent Owner”) (collectively, “the parties”) filed a Joint Motion to Terminate (“Motion” or “Mot.,” Paper 22) with respect to Samsung only. Mot. 2. The parties have entered into a settlement agreement that resolves their disputes related to the challenged patent. Id. The parties filed a copy of the settlement agreement (Ex. 1012) along with a Joint Request to Treat the Settlement Agreement as Business Confidential Information. Paper 23; see also 37 C.F.R. § 42.74(c) (“A party to a settlement may request that the settlement be treated as business confidential information and be kept separate from the files of an involved patent or application.”). 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.” Samsung is not the sole petitioner in these reviews, which remains pending as to Petitioner Apple Inc., who the parties represent does not oppose termination as to Samsung only. Mot. 2. No final written decision has been issued, and, apart from the instant motion, there are no outstanding motions in this proceeding. The Board acknowledges that the written settlement agreement appears to be a true copy. All terminated and pending district court actions, including a terminated action relating to Samsung, with respect to the patent, are listed in the Motion. Mot. 3–4. The status of all pending inter partes reviews involving U.S. Patent No. 7,643,168 B2 is also listed. Id. at 4. The parties argue termination is appropriate because § 317(a) provides the trial shall be terminated with respect to “any petitioner upon the joint 3 IPR2015-00414 Patent 7,643,168 B2 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.” Mot. 2–3. The parties also contend that strong public policy reasons favor settlement. Id. at 3. The Board determines that, in the circumstances of these cases, it is appropriate to terminate the review as to Samsung. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. This paper does not constitute a final written decision pursuant to 35 U.S.C. § 318(a). ORDER Accordingly, it is ORDERED that the Joint Motion to Terminate with respect to Samsung only is granted; and FURTHER ORDERED that the settlement agreement (Exhibit 1012) be treated as business confidential information and be kept separate from the files of the involved U.S. Patent No. 7,643,168 B2. 4 IPR2015-00414 Patent 7,643,168 B2 For PETITIONER: Samsung: Brian Buroker Blair Silver GIBSON, DUNN & CRUTCHER LLP BBuroker@gibsondunn.com bsilver@gibsondunn.com Apple, Inc.: Steven Park Naveen Modi Elizabeth Brann PAUL HASTINGS LLP stevenpark@paulhastings.com naveenmodi@paulhastings.com elizabethbrann@paulhastings.com For PATENT OWNER: Robert C. Curfiss E-WATCH INC. bob@curfiss.com David O. Simmons IVC PATENT AGENCY dsimmons1@sbcglobal.net

Apple Inc. v. E-Watch Inc.