Sony Mobile Communications (Usa) Inc.v.Adaptix, Inc.

Patent Trial and Appeal Board

Dec 21, 2015

11199586 (P.T.A.B. Dec. 21, 2015)

Trials@uspto.gov Paper 43
571-272-7822 Entered: December 21, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

SONY MOBILE COMMUNICATIONS (USA) INC., SONY MOBILE
COMMUNICATIONS AB, SONY MOBILE COMMUNICATIONS, INC.,
SONY ELECTRONICS, INC., SONY CORP. OF AMERICA, and
SONY CORP.,
Petitioner,
v.
ADAPTIX, INC.,
Patent Owner.

Case IPR2014-01525
Patent 7,454,212 B2

Before HOWARD B. BLANKENSHIP, TREVOR M. JEFFERSON, and
JUSTIN BUSCH, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

JUDGMENT
Termination Pursuant to Settlement
37 C.F.R. §§ 42.5, 42.71, 42.73, 42.74

IPR2014-01525
Patent 7,454,212 B2

2
On December 9, 2015, Petitioner and Patent Owner filed a Joint
Motion to Terminate. Paper 37. Along with the Motion, the parties filed a
copy of their Settlement Agreement, made in connection with the
termination of this case, in accordance with 37 C.F.R. § 42.74(b). Ex. 1026.
The parties submitted a joint request that the Settlement Agreement be
treated as business confidential information and kept separate from the files
of the patent at issue, U.S. Patent No. 7,454,212 B2 (“the ’212 patent”),
under 37 C.F.R. § 42.74(c). Paper 38. The parties also filed a copy of their
Binding Term Sheet and a joint request that the Term Sheet be treated as
business confidential information and kept separate from the ’212 patent
files. Ex. 1027; Paper 41. For the reasons set forth below, the Joint Motion
to Terminate and the joint requests are granted.
The Board generally expects that a case “will terminate after the filing
of a settlement agreement, unless the Board has already decided the merits.”
Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14,
2012); see 37 C.F.R. § 42.72. In their joint motion to terminate, the parties
indicate that the Settlement Agreement resolves all disputes between them
involving the patent-at-issue in this case. Paper 37, 2. Upon consideration
of the facts before us, we determine that it is appropriate to terminate this
case and enter judgment, without rendering a final written decision. See
37 C.F.R. §§ 42.5(a), 42.71(a), 42.73(a), 42.74. We, therefore, grant the
Joint Motion to Terminate. Paper 37.
We also determine that the parties have complied with the
requirements of 37 C.F.R. § 42.74(c) to have the Settlement Agreement and
Binding Term Sheet treated as business confidential information and kept
IPR2014-01525
Patent 7,454,212 B2

3
separate from the files of the ’212 patent. Thus, we grant the joint requests.
Papers 38, 41.

ORDER
For the foregoing reasons, it is:
ORDERED that the joint requests that the Settlement Agreement and
Binding Term Sheet be treated as business confidential information and kept
separate Under 37 C.F.R. § 42.74(c) (Papers 38, 41) are granted; and
FURTHER ORDERED that the Joint Motion to Terminate (Paper 37)
is granted and this proceeding is terminated.
IPR2014-01525
Patent 7,454,212 B2

4
PETITIONER:

L. Scott Bloebaum
scottbloebaum@andrewskurth.com

Scott McKeown
cpdocketmckeown@oblon.com

PATENT OWNER:

Amedeo Ferraro
aferraro@martinferraro.com

Wesley Meinerding
wmeinerding@martinferraro.com