Apple Inc.v.E-Watch Inc.

Patent Trial and Appeal Board

Nov 12, 2015

11617509 (P.T.A.B. Nov. 12, 2015)

Trials@uspto.gov Paper 24
571-272-7822 Entered: November 12, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

APPLE INC.,
SAMSUNG ELECTRONICS LTD, and
SAMSUNG ELECTRONICS AMERICA, INC.,
Petitioner,

v.

E-WATCH, INC.,
Patent Owner.

Case IPR2015-004141
Case IPR2015-00611
Patent 7,643,168 B2

Before JAMESON LEE, GREGG I. ANDERSON, and
MATTHEW R. CLEMENTS, Administrative Patent Judges.

ANDERSON, Administrative Patent Judge.

DECISION
Joint Motion to Terminate
37 C.F.R. § 42.5(a), 42.71(a)

1 Case IPR2015-00611 has been joined to this proceeding.
2
IPR2015-00414
Patent 7,643,168 B2

On October 9, 2015, pursuant to our authorization (Paper 21), Petitioner
Samsung Electronics Ltd. and Samsung Electronics America, Inc. (“Samsung”)
and e-Watch, Inc. (“Patent Owner”) (collectively, “the parties”) filed a Joint
Motion to Terminate (“Motion” or “Mot.,” Paper 22) with respect to Samsung
only. Mot. 2. The parties have entered into a settlement agreement that
resolves their disputes related to the challenged patent. Id. The parties filed a
copy of the settlement agreement (Ex. 1012) along with a Joint Request to Treat
the Settlement Agreement as Business Confidential Information. Paper 23; 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 the patent owner, unless the Office has decided
the merits of the proceeding before the request for termination is filed.”
Samsung is not the sole petitioner in these reviews, which remains pending as
to Petitioner Apple Inc., who the parties represent does not oppose termination
as to Samsung only. Mot. 2. No final written decision has been issued, and,
apart from the instant motion, there are no outstanding motions in this
proceeding.
The Board acknowledges that the written settlement agreement appears
to be a true copy. All terminated and pending district court actions, including
a terminated action relating to Samsung, with respect to the patent, are listed
in the Motion. Mot. 3–4. The status of all pending inter partes reviews
involving U.S. Patent No. 7,643,168 B2 is also listed. Id. at 4.
The parties argue termination is appropriate because § 317(a) provides
the trial shall be terminated with respect to “any petitioner upon the joint
3
IPR2015-00414
Patent 7,643,168 B2

request of the petitioner and the patent owner, unless the Office has decided
the merits of the proceeding before the request for termination is filed.” Mot.
2–3. The parties also contend that strong public policy reasons favor
settlement. Id. at 3.
The Board determines that, in the circumstances of these cases, it is
appropriate to terminate the review as to Samsung. See 35 U.S.C. § 317(a);
37 C.F.R. § 42.72. This paper does not constitute a final written decision
pursuant to 35 U.S.C. § 318(a).
ORDER
Accordingly, it is
ORDERED that the Joint Motion to Terminate with respect to Samsung
only is granted; and
FURTHER ORDERED that the settlement agreement (Exhibit 1012) be
treated as business confidential information and be kept separate from the
files of the involved U.S. Patent No. 7,643,168 B2.
4
IPR2015-00414
Patent 7,643,168 B2

For PETITIONER:

Samsung:

Brian Buroker
Blair Silver
GIBSON, DUNN & CRUTCHER LLP
BBuroker@gibsondunn.com
bsilver@gibsondunn.com

Apple, Inc.:

Steven Park
Naveen Modi
Elizabeth Brann
PAUL HASTINGS LLP
stevenpark@paulhastings.com
naveenmodi@paulhastings.com
elizabethbrann@paulhastings.com

For PATENT OWNER:

Robert C. Curfiss
E-WATCH INC.
bob@curfiss.com

David O. Simmons
IVC PATENT AGENCY
dsimmons1@sbcglobal.net