LG Electronics Inc.v.NFC Technology, LLC

Patent Trial and Appeal Board

Aug 20, 2014

11302291 (P.T.A.B. Aug. 20, 2014)

Trials@uspto.gov Paper 10
571-272-7822 Entered: August 20, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

LG ELECTRONICS, INC., LG ELECTRONICS USA, INC., and
LG ELECTRONICS MOBILECOMM U.S.A., INC.,
Petitioner,

v.

NFC TECHNOLOGY, LLC,
Patent Owner.
____________

Case IPR2014-00964
Patent 7,665,664 B2
___________________

Before JAMES B. ARPIN, NEIL T. POWELL, and
FRANCES L. IPPOLITO, Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

JUDGMENT
Termination of the Proceeding
37 C.F.R. § 42.73(a)

Case IPR2014-00964
Patent 7,665,664 B2
2
On August 13, 2014, the parties filed a Joint Motion to Terminate (Paper 8)
pursuant to 35 U.S.C. § 317(a). In addition, pursuant to 35 U.S.C. § 317(b) and
37 C.F.R. § 42.74(c), Patent Owner filed a copy of a Settlement Agreement (Ex.
2001) along with a Joint Request That Settlement Agreement Be Treated As
Business Confidential Information And Kept Separate Under 37 C.F.R. § 42.74(c)
(Paper 9), to be kept separate from the patent file.
This case is in the preliminary proceeding1 stage; no decision whether to
institute a trial has been made. The co-pending district court litigation between the
parties has been dismissed, with prejudice, effective August 11, 2014, and the
parties have represented that they have settled their dispute regarding Patent No.
US 7,665,664 B2.2 See Paper 8, 2-3. Under these circumstances, we determine
that it is appropriate to terminate the case without rendering a final written
decision. 37 C.F.R. § 42.74. Based on the facts of this case, it is appropriate to
enter judgment.3 Therefore, the Joint Motion to Terminate is granted.
Accordingly, it is

1 A preliminary proceeding begins with the filing of a petition for instituting a trial
and ends with a written decision as to whether trial will be instituted.
37 C.F.R. § 42.2.
2 District court litigation between Patent Owner and HTC America, Inc., and HTC
Corporation (“HTC”) remains pending in the U.S. District Court for the Eastern
District of Texas, Civil Action No. No. 2:13-cv-01058 (Dec. 5, 2013). Paper 8, 3.
Further, HTC has filed a petition for inter partes review, IPR2014-01199, against
Patent Owner regarding the same patent. Id. at 3 n.1.
3 A judgment means a final written decision by the Board, or a termination of a
proceeding. 37 C.F.R. § 42.2.
Case IPR2014-00964
Patent 7,665,664 B2
3
ORDERED that the parties’ request that the Settlement Agreement be
treated as business confidential information, to be kept separate from the patent
file, is granted;
FURTHER ORDERED that the Joint Motion to Terminate is granted; and
FURTHER ORDERED that the proceeding is terminated.

PETITIONER:

W. Karl Renner
Jeremy Monaldo
FISH & RICHARDSON P.C.
axf@fr.com
IPR19688-00541P1@FR.COM

PATENT OWNER:
Jon E. Wright
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
jwright-PTAB@skgf.com

Robert Auchter
MCKOOL SMITH, P.C.
rauchter@McKoolSmith.co