Apple Inc.v.Vantage Point Technology, Inc.Download PDFPatent Trial and Appeal BoardJul 9, 201508146818 (P.T.A.B. Jul. 9, 2015) Copy Citation 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 IPR2015-00191 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 IPR2015-00191 Patent 5,463,750 3 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. IPR2015-00191 Patent 5,463,750 4 PETITIONER: Walter Renner axf@fr.com Roberto Devoto IPR39521-0009IP1@fr.com PATENT OWNER: Tarek Fahmi tarek.fahmi@ascendalaw.com Copy with citationCopy as parenthetical citation