ARM Inc.v.VANTAGE POINT TECHNOLOGY, INC.

Patent Trial and Appeal Board

Apr 7, 2015

08146818 (P.T.A.B. Apr. 7, 2015)

Trials@uspto.gov Paper 10
571-272-7822 Entered: April 7, 2015
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
ARM INC.,
Petitioner,
v.
VANTAGE POINT TECHNOLOGY, INC.,
Patent Owner.
_______________

Case IPR2015-00175
Patent 5,463,750

_______________

Before JAMES P. CALVE, BRYAN F. MOORE, and
DAVID C. MCKONE, Administrative Patent Judges.

MCKONE, Administrative Patent Judge.
JUDGMENT
Termination of the Proceeding
37 C.F.R. § 42.73
IPR2015-00175
Patent 5,463,750
2
On March 19, 2015, and pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
§ 42.74, the parties filed a joint motion to terminate. Paper 9. Along with
the joint motion, the parties submitted a copy of an Agreement to Terminate
Inter Partes Review. Paper 8.
We convened a conference call on March 30, 2015, to remind the
parties that authorization is required to submit a motion for termination and
to confirm that the Agreement to Terminate Inter Partes Review constitutes
all “agreement[s] or understanding[s] between the patent owner and [the]
petitioner, including any collateral agreements referred to in such agreement
or understanding, made in connection with, or in contemplation of, the
termination of [this] inter partes review,” as required by 35 U.S.C. § 317(b).
The parties represented that Petitioner is a supplier to the defendants
in the related district court litigations listed in Paper 4. The parties further
represented that the related district court litigations are being dismissed with
prejudice at the request of the respective parties to those litigations.
Petitioner represented that it was aware of no other agreement or
understanding to which it was a party besides the Agreement to Terminate
Inter Partes Review filed in this proceeding. Following the conference call,
Patent Owner conducted an investigation, and in an April 2, 2015, electronic
mail message to the Board, represented that “no collateral agreements made
in connection with or in contemplation of the termination of this proceeding
(IPR2015-00175) exist.” We accept the parties’ representations.
This proceeding is at an early stage. We have not yet determined
whether to institute a trial. In view of the early stage of this proceeding, and
the concurrent dismissals of the district court litigations, the Board
determines that it is appropriate to terminate the proceeding with respect to
IPR2015-00175
Patent 5,463,750
3
both parties. Based on the facts of this case, it is appropriate to enter
judgment.1 Therefore, the joint motion to terminate the proceeding is
granted.
Accordingly, it is
ORDERED that the joint motion to terminate the proceeding is
granted; and
FURTHER ORDERED that the proceeding is terminated.

PETITIONER:
Scott A. Felder
Floyd B. Chapman
WILEY REIN LLP
sfelder@wileyrein.com
fchapman@wileyrein.com

PATENT OWNER:
Tarek N. Fahmi
Megan M. Gallant
ASCENDA LAW GROUP, PC
tarek.fahmi@ascendalaw.com
megan.gallant@ascendalaw.com

1 A judgment means a final written decision by the Board, or a termination
of a proceeding. See 37 C.F.R. § 42.2.