Sound View Innovations LLC

Patent Trials and Appeals BoardAug 25, 2020

IPR2020-00818 (P.T.A.B. Aug. 25, 2020)

Trials@uspto.gov Paper: 9 571.272.7822 Entered: August 25, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ WALMART INC. and VUDU, INC., Petitioner, v. SOUND VIEW INNOVATIONS, LLC, Patent Owner. ____________ IPR2020-00818 Patent 6,725,456 B1 ____________ Before DEBRA K. STEPHENS, DANIEL J. GALLIGAN, and JOHN A. HUDALLA, Administrative Patent Judges. STEPHENS, Administrative Patent Judge. DECISION Settlement Prior to Institution of Trial 37 C.F.R. § 42.74 IPR2020-00818 Patent 6,725,456 B1 2 I. INTRODUCTION With the Board’s authorization, in the above-captioned proceeding, Petitioner and Patent Owner (collectively “the Parties”) filed a Joint Motion to Terminate (Paper 7 (“Joint Motion”)). In support of the Joint Motion, the Parties filed a copy of a written confidential settlement agreement (Ex. 2101 (“Settlement Agreement”)). The Parties also filed a Joint Request to Treat Settlement Agreement as Business Confidential Information (Paper 8 (“Joint Request”)). II. DISCUSSION In the Joint Motion, the Parties state that they have reached an agreement to jointly seek termination of this proceeding (including dismissal of the petition) and have memorialized their agreement in a written confidential settlement agreement (Joint Motion 1). The Parties state that their agreement resolves their disputes in the proceeding, and that they have agreed to voluntary dismissal of the related district court litigation (id. at 1–2). The Parties assert that “[t]he Settlement Agreement, Exhibit 2101, has been made in writing, and a true and correct copy shall be filed with this Office” (id. at 5). The Parties also “certify that, aside from the Settlement Agreement, there are no other agreements or understandings, oral or written, between the Parties and made in connection with, or in contemplation of, the termination of the inter partes review” (id.). There are strong public policy reasons to favor settlement between the parties to a proceeding (Office Patent Trial Practice Guide, 84 Fed. Reg. 64,280 (Nov. 21, 2019)). The proceeding is in its preliminary phase, and we have not yet decided whether to institute a trial in the proceeding. In view of the early stage of the proceeding and the settlement between the Parties, we determine it is appropriate to dismiss the petition and terminate the proceeding as to the Parties, without rendering a decision on institution or a final written decision . IPR2020-00818 Patent 6,725,456 B1 3 In the Joint Request, the Parties jointly request to treat the Settlement Agreement as business confidential information, and to have it be kept separate from the files of the involved patent and associated proceeding (Joint Request 1). After reviewing the Settlement Agreement between the Parties, we find that the Settlement Agreement contains confidential business information regarding the terms of settlement. We determine the Settlement Agreement (Ex. 2101) between the Parties shall be treated as business confidential information under 37 C.F.R. § 42.74(c) and shall be kept it separate from the files of the involved patents and associated proceeding. This Order does not constitute a final written decision pursuant to 35 U.S.C. § 318(a). III. ORDER Accordingly, it is: ORDERED that the Joint Motion to Terminate is granted; FURTHER ORDERED that the above-captioned proceeding is terminated and the petition is dismissed; and FURTHER ORDERED that the Joint Request to Treat Settlement Agreement as Business Confidential Information is granted, and the Settlement Agreement shall remain designated as “Parties and Board Only” in the Board’s filing system, shall made available only to Federal Government agencies on written request, or to any person on a showing of good cause, and shall be kept separate from the files of the involved patent and associated proceeding, pursuant to 37 C.F.R. § 42.74(c). IPR2020-00818 Patent 6,725,456 B1 4 For PETITIONER: Heidi L. Keefe Phillip Morton COOLEY LLP hkeefe@cooley.com pmorton@cooley.com For PATENT OWNER: Kenneth Weatherwax Edward Hsieh Parham Hendifar Bridget Smith Patrick Maloney Jason Linger LOWENSTEIN & WEATHERWAX LLP weatherwax@lowensteinweatherwax.com hsieh@lowensteinweatherwax.com hendifar@lowensteinweatherwax.com smith@lowensteinweatherwax.com maloney@lowensteinweatherwax.com linger@lowensteinweatherwax.com