Intel Corporationv.e.Digital Corporation

Patent Trial and Appeal Board

Nov 24, 2014

08884245 (P.T.A.B. Nov. 24, 2014)

Trials@uspto.gov Paper 8
571-272-7822 Entered: November 24, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

INTEL CORPORATION,
Petitioner,

v.

E.DIGITAL CORPORATION,
Patent Owner.

Case IPR2014-01429
Patent 5,839,108
____________

Before LYNNE E. PETTIGREW, DAVID C. MCKONE, and KRISTINA M.
KALAN, Administrative Patent Judges.

KALAN, Administrative Patent Judge.

JUDGMENT
Termination of the Proceeding
37 C.F.R. § 42.72

IPR2014-01429
Patent 5,839,108

2
The parties have requested that the above-captioned proceeding be
terminated pursuant to a settlement. The Board authorized the parties to file a joint
request to terminate the above-captioned proceeding on November 17, 2014.
On November 18, 2014, and pursuant to 35 U.S.C. § 317, the parties filed a
joint motion to terminate the above-captioned proceeding (Paper 7), along with a
copy of the settlement agreement (Ex. 1016). The joint motion to terminate
included a request to file the settlement agreement as business confidential
information, to be kept separate from the patent file pursuant to 35 U.S.C. § 317(b)
and 37 C.F.R. § 42.74(c). Paper 7, 2.
Generally, the Board expects that a proceeding will terminate after the filing
of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed.
Reg. 48,756, 48,768 (Aug. 14, 2012). This case is in the preliminary proceeding
stage. A preliminary proceeding begins with the filing of a petition for instituting a
trial and ends with a written decision as to whether trial will be instituted.
37 C.F.R. § 42.2. Petitioner filed a Petition on August 29, 2014. Patent Owner has
not yet filed a Preliminary Response. No decision whether to institute a trial has
been made.
The joint motion to terminate indicates that, on November 12, 2014, the
parties settled all of their disputes involving U.S. Patent No. 5,839,108 (“the ’108
patent”). Paper 7, 2. The joint motion to terminate further indicates that (1) the
Parties have agreed to jointly request termination of all the IPRs Petitioner filed
concerning the ’108 patent; and (2) the litigation between the Parties involving the
’108 patent has been dismissed as part of the settlement. Id. at 3. The parties
represent that the related district court litigation, e.Digital Corporation v. Intel
Corporation, S.D. Cal. Case No. 3:13-cv-02905-H-BLM, was dismissed on
November 14, 2014. Id. at 1.
IPR2014-01429
Patent 5,839,108

3
Based on the facts of the case, it is appropriate to terminate the proceeding
as to both Petitioner and Patent Owner without rendering either a decision to
institute or a final written decision. See 37 C.F.R. § 42.72. Therefore, the joint
motion to terminate and the request to file the settlement agreement as business
confidential information are granted.
Accordingly, it is
ORDERED that the joint motion to file the settlement agreement as business
confidential information, to be kept separate from the patent file, is granted;
FURTHER ORDERED that the joint motion to terminate the proceeding is
granted; and
FURTHER ORDERED that the proceeding is terminated.

IPR2014-01429
Patent 5,839,108

4
For PETITIONER:

Todd Friedman
todd.friedman@kirkland.com
Gregory Arovas
greg.arovas@kirkland.com
ntel-eDigital-KEService@kirkland.com

For PATENT OWNER

Robert Purcell
rpurcell@repurcelllaw.com