Netgear, Inc.v.Charles C. Freeny III

Patent Trial and Appeal BoardAug 25, 2014

10205097 (P.T.A.B. Aug. 25, 2014)

Trial@uspto.gov 571-272-7822 Paper 8 Entered: August 25, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ NETGEAR, INC., Petitioner v. CHARLES C. FREENY III, BRYAN E. FREENY, AND JAMES P. FREENY, PATENT OWNER. ____________ Case IPR2014-00704 Patent 7,110,744 B2 ____________ Before HOWARD B. BLANKENSHIP, PHILLIP J. KAUFFMAN and MICHAEL W. KIM, Administrative Patent Judges. KAUFFMAN, Administrative Patent Judge. JUDGMENT TERMINATION OF THE PROCEEDING 37 C.F.R. § 42.73 Case IPR2014-00704 Patent 7,110,744 B2 2 On August 20, 2014, the parties filed a JOINT REQUEST TO TERMINATE AND SEAL, seeking to terminate the proceedings and to seal the settlement agreement as business confidential information to be kept separate from the patent file (Paper 7). See 35 U.S.C. § 317; 37 C.F.R. § 42.74. The parties also filed a true copy of the written settlement agreement. Ex. 1017. Although the parties did not receive authorization to file this motion as required by 37 C.F.R. § 42.20(b), because there is no apparent prejudice, we waive that requirement pursuant to our authority under 37 C.F.R. § 42.5(b). At the time the request was filed, this matter was in the preliminary proceeding stage 1 and the Office had not decided the merits of this proceeding. There are no collateral agreements referred to in the settlement agreement. See Ex. 1017 ¶ 8.3. The settlement agreement provides that, following termination, the parties will file a joint motion to dismiss with prejudice the related lawsuit between Petitioner and Patent Owner involving US patent 7,110,744, in the Eastern District of Texas. 2 Id. ¶ 3.5. Under these circumstances, the Board determines that it is appropriate to enter judgment 3 and terminate the trial without rendering a final written decision. 37 C.F.R. § 42.72. It is, therefore, ORDERED that the joint motion to terminate the proceeding is GRANTED and the proceeding is hereby terminated; and 1 “Preliminary proceeding” is defined as the period from the filing of a petition for instituting a trial to the written decision as to whether a trial will be instituted. 37 C.F.R. § 42.2. 2 Identified as Charles C. Freeny III, Bryan E. Freeny, and James P. Freeny v. Netgear, Inc., No. 2:13-CV-00367-JRG (E.D. Tex.). 3 A judgment means a final written decision by the Board, or a termination of a proceeding. 37 C.F.R. § 42.2. Case IPR2014-00704 Patent 7,110,744 B2 3 FURTHER ORDERED that the parties’ joint request that the settlement agreement be treated as business confidential information, which shall be kept separate from the file of the involved patents under the provisions of 35 U.S.C. § 327(b) and 37 C.F.R. § 42.74(c), is GRANTED. PETITIONER: Marc S. Kaufman Gerard M. Donovan mskaufman@reedsmith.com gdonovan@reedsmith.com PATENT OWNER: Marc Brockhaus Ann Robl mbrockhaus@dunlapcodding.com arobl@dunlapcodding.com

Netgear, Inc. v. Charles C. Freeny III