Honda Tsushin Kogyo Co., Ltd.,v.Advanced Connection Technology Inc.Download PDFPatent Trials and Appeals BoardJun 20, 201411015856 - (D) (P.T.A.B. Jun. 20, 2014) Copy Citation Trials@uspto.gov Paper 24 Tel: 571-272-7822 Entered: June 20, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ HONDA TSUSHIN KOGYO CO., LTD. Petitioner v. ADVANCED CONNECTION TECHNOLOGY INC. Patent Owner _______________ Case IPR2013-00520 Case IPR2014-00307 Patent 7,128,617 B2 _______________ Before HOWARD B. BLANKENSHIP, KARL D. EASTHOM, and BARBARA A. BENOIT, Administrative Patent Judges. EASTHOM, Administrative Patent Judge. JUDGMENT Termination of the Proceedings 1 37 C.F.R. §§ 42.72, 42.73, 42.74 1 This Judgment (by termination) will be entered in both proceedings. Cases IPR2013-00520, IPR2014-00307 Patent 7,128,617 B2 2 On June 13, 2014, in each of the above-listed related proceedings, which involve challenges to U.S. Patent No. 7,128,617 B2 (“the ’617 Patent”), the parties filed a joint motion to terminate the respective proceeding, along with a true copy of their written settlement agreement, made in connection therewith, in accordance with 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b). Paper 21 (attaching Ex. 1018, written settlement agreement). 2 The parties also filed a joint motion in each case to treat the settlement agreement as confidential business information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 22. In each case, the joint motion to terminate states that the parties jointly request termination of the proceeding and that termination is proper because the proceeding is at a preliminary stage. See Paper 21. We recently instituted trial in IPR2013-00520 (on February 14, 2014), and the IPR2014-00307 is still in the pre- institution stage. The motions also indicate that the agreement requires dismissal of a related district court lawsuit involving the ’617 Patent, in which a named real party-in-interest here is a defendant there. That related lawsuit has been dismissed. See Paper 21, 1–2 (discussing related district court lawsuits). At this preliminary stage in each proceeding, the record lacks full briefing on the trial issues, rendering unripe a final written decision. Based on the foregoing, the record warrants entering judgment by terminating the proceeding without rendering a final written decision. See 35 U.S.C. § 317(a); 37 C.F.R. §§ 42.72 (termination), 42.73 (judgment generally), 2 Unless otherwise noted, record citations refer to the representative IPR2013- 00520 proceeding. The parties filed substantively similar motions and a settlement agreement in IPR2014-00307. See IPR2014-00307, Papers 11, 12, Ex. 1015. Cases IPR2013-00520, IPR2014-00307 Patent 7,128,617 B2 3 42.74 (settlement). A judgment “means a final written decision by the Board, or a termination of a proceeding.” 37 C.F.R. § 42.2. 3 It is ORDERED that the joint motions to terminate IPR2013-00520 and IPR2014-00307 are granted; FURTHER ORDERED that the two proceedings are terminated; and FURTHER ORDERED that the parties’ joint requests in IPR2013-00520 and IPR2014-00307, that the settlement agreements be treated as business confidential information, kept separate from the patent files, and made available only to Federal Government agencies on written request, or to any person on a showing of good cause, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), are granted. 3 This Judgment renders moot a decision on any other pending motions, or requests to file motions, including, in IPR2014-00307, Patent Owner’s motion for pro hac vice admission and Petitioner’s request to file a motion for joinder. See IPR2014- 00307, Papers 8, 9. Cases IPR2013-00520, IPR2014-00307 Patent 7,128,617 B2 4 FOR PETITIONER: Ralph Gabric rgabric@brinkshofer.com Tadashi Horie thorie@brinkshofer.com FOR PATENT OWNER: Jing Cherng gcherng@mount.com Copy with citationCopy as parenthetical citation