HTC Corporationv.e-Watch, Inc.

Patent Trial and Appeal BoardSep 17, 2015

10336470 (P.T.A.B. Sep. 17, 2015)

Trials@uspto.gov Paper 33 571-272-7822 Entered: September 17, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ HTC CORPORATION, HTC AMERICA, INC., SAMSUNG ELECTRONICS LTD., and SAMSUNG ELECTRONICS AMERICA, INC., Petitioner, v. E-WATCH, INC. and E-WATCH CORPORATION, Patent Owner. IPR2014-00987 (Patent 7,365,871 B2) 1 IPR2014-00989 (Patent 7,643,168 B2) 2,3 Before JAMESON LEE, GREGG I. ANDERSON, and MATTHEW R. CLEMENTS, Administrative Patent Judges. CLEMENTS, Administrative Patent Judge. DECISION Joint Motion to Terminate 37 C.F.R. § 42.5(a), 42.71(a) 1 Case IPR2015-00541 has been joined with this proceeding. 2 Case IPR2015-00543 has been joined with this proceeding. 3 This order addresses an issue that is identical in both cases. Therefore, we exercise discretion to issue one order to be filed in each of the two cases. The parties, however, are not authorized to use this style heading. IPR2014-00987 (Patent 7,365,871 B2) IPR2014-00989 (Patent 7,643,168 B2) 2 On September 11, 2015, Petitioner HTC Corporation and HTC America, Inc. (“HTC”) and Petitioner Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. (“Samsung”) (collectively, “Petitioners”) and Patent Owner e-Watch, Inc. and e-Watch Corporation (“e-Watch) filed a “Joint Motion to Terminate” based on a settlement agreement that resolves the parties’ disputes related to the challenged patent. Paper 31. 4 The parties concurrently filed a copy of the settlement agreement between HTC and e- Watch (Ex. 1013) and a copy of the settlement agreement between Samsung and e-Watch (Ex. 1014), along with a “Joint Request to Treat the Settlement Agreements as Business Confidential Information Under 35 U.S.C. § 317(b) and 37 C.F.R. 42.74(c).” Paper 32; 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 patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” We have not yet decided the merits of this proceeding. Under these circumstances, we determine that it is appropriate to terminate this proceeding as to both Petitioners and Patent Owner without rendering a final written decision. See 37 C.F.R. § 42.72. 4 Citations are to the filings in IPR2014-00987, unless otherwise noted. IPR2014-00987 (Patent 7,365,871 B2) IPR2014-00989 (Patent 7,643,168 B2) 3 ORDER Accordingly, it is ORDERED that the Joint Motion to Terminate is granted; and FURTHER ORDERED that the settlement agreements (Exhibits 1013 and 1014 in IPR2014-00987 and Exhibits 1011 and 1012 in IPR2014-00989) be treated as business confidential information and be kept separate from the files of the involved U.S. Patent Nos. 7,635,871 B2 and 7,643,168 B2. IPR2014-00987 (Patent 7,365,871 B2) IPR2014-00989 (Patent 7,643,168 B2) 4 For PETITIONER: Bing Ai Cheng C. (Jack) Ko Kevin Patariu Babak Tehranchi PERKINS COIE LLP Steven L. Park Naveen Modi Elizabeth Brann PAUL HASTINGS LLP stevenpark@paulhastings.com naveenmodi@paulhastings.com elizabethbrann@paulhastings.com For PATENT OWNER: Robert C. Curfiss bob@curfiss.com and David O. Simmons IVC Patent Agency dsimmons1@sbcglobal.net

HTC Corporation v. e-Watch, Inc.