Apple Inc.v.Vantage Point Technology, Inc.

Patent Trial and Appeal Board

Jul 9, 2015

08146818 (P.T.A.B. Jul. 9, 2015)

Trials@uspto.gov Paper 12
Tel: 571-272-7822 Entered: July 9, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
APPLE INC.,
Petitioner,
v.
VANTAGE POINT TECHNOLOGY, INC.,
Patent Owner.
_______________

Case IPR2015-00191
Patent 5,463,750
_______________

Before JAMES P. CALVE, BRYAN F. MOORE, and
DAVID C. MCKONE, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION
Motion to Terminate
37 C.F.R. § 42.72

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Patent 5,463,750

2

INTRODUCTION
In response to an email to the Board Staff, the Board authorized the
parties to file motions to terminate the instant proceedings, as well as
authorized the parties to file joint requests that the settlement agreements be
treated as business confidential information. On June 30, 2015, the parties
filed a joint motion to terminate the instant proceeding (Paper 10), along
with, what they describe as a true copy of their written settlement agreement,
made in connection with the termination of the instant proceeding
(Ex. 2001). The parties also filed a joint request to treat the settlement
agreement as business confidential information. Paper 11. For the reasons
set forth below, the motions and requests are granted.

DISSCUSION
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 patent owner, unless the Office has decided the
merits of the proceeding before the request for termination is filed.” See 37
C.F.R. § 42.72. The parties are reminded that the Board is not a party to the
settlement, and may independently identify any question of patentability.
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).
The parties’ joint motions state that they settled their dispute and
move to terminate these proceedings, pursuant to 35 U.S.C. § 317(a). Paper
10, 1–2. The parties filed what they describe as a true copy of their written
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settlement agreement, made in connection with the termination of the instant
proceeding. Ex. 2001. The motion indicates that the related district court
cases between the parties are terminated. Paper 10, 3–7. In these
proceedings, the parties’ joint motions to terminate were filed prior to the
oral arguments and the Board has not made a final decision on the merits in
any of the four cases. Under these circumstances, we determine that it is
appropriate to terminate these four proceedings with respect to all parties.

CONCLUSION
It is:
ORDERED that the joint motions to terminate these proceedings are
GRANTED, and these proceedings are, hereby, terminated; and
FURTHER ORDERED that the parties’ joint requests that the
settlement agreements be treated as business confidential information and
kept separate from the file of the involved patent under 35 U.S.C. § 317(b)
and 37 C.F.R. § 42.74(c) is GRANTED.

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PETITIONER:

Walter Renner
axf@fr.com

Roberto Devoto
IPR39521-0009IP1@fr.com

PATENT OWNER:

Tarek Fahmi
tarek.fahmi@ascendalaw.com