Panasonic Corporationv.Optical Devices, LLC

Patent Trial and Appeal Board

Mar 5, 2015

11197731 (P.T.A.B. Mar. 5, 2015)

Trials@uspto.gov Paper No. 26
571-272-7822 Entered: March 5, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

PANASONIC CORPORATION and
PANASONIC CORPORATION OF NORTH AMAERICA,
Petitioner

v.

OPTICAL DEVICES, LLC,
Patent Owner.
____________

Case IPR2014-00303
Patent RE40,927 E
____________

Before ERICA A. FRANKLIN, GLENN J. PERRY, and JAMES B. ARPIN,
Administrative Patent Judges.

PERRY, Administrative Patent Judge.

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

Case IPR2014-00303
Patent RE40,927 E

2
I. DISCUSSION
On February 23, 2015, the parties filed a Joint Motion (Paper 24) to
terminate this proceeding, as well as a Joint Request (Paper 25) to have their
settlement agreement treated as business confidential information under 35
U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). The parties also filed a true copy
of their written settlement agreement. Ex. 2006. The settlement agreement
was filed so as to limit viewing to the parties and the Board only.
The parties indicated in their Joint Motion that termination of this
proceeding is appropriate because they have reached an agreement regarding
their dispute with respect to U.S. Patent No. RE40,927 E (“the ’927 patent”).
The Joint Motion indicates that the parties have settled their dispute. The
record in this proceeding is incomplete. Terminating this inter partes review
will not affect the inter partes reviews now pending with another party.
The parties indicate that their related District Court litigation is settled
and that the related ITC investigation is dismissed. Petitioner indicates that
it will not file any further papers in this proceeding. Patent Owner
acknowledges that disputes remain with other parties and that the ’927
patent and related patents are involved in other proceedings including inter
partes reviews and litigation.
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 patent owner, unless the Office has decided the
merits of the proceeding before the request for termination is filed.” As the
parties indicate in their Joint Motion, this proceeding has not been decided
on its merits.

Case IPR2014-00303
Patent RE40,927 E

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Further, under 37 C.F.R. § 42.74(b), “[a]ny agreement or
understanding between the parties made in connection with, or in
contemplation of, the termination of a proceeding shall be in writing and a
true copy shall be filed with the Board before termination of the trial.” As
the parties have filed their written settlement agreement, and the co-pending
district court cases have been dismissed, we determine that it is appropriate
to terminate this proceeding without rendering a Final Written Decision as to
the patentability of claims 48, 49, 51–53, 55, 57, 60, 61, 63–65, 67, 68, and
71 of the ’927 patent. See 37 C.F.R. §§ 42.72, 42.73, 42.74.

II. ORDER
It is, therefore,
ORDERED that the Joint Motion to terminate the proceeding is
GRANTED and the proceeding is hereby terminated; and
FURTHER ORDERED that the parties’ Joint Request that the
settlement agreement be treated as business confidential information and
shall be kept separate from the file of the involved patent under the
provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is GRANTED.

Case IPR2014-00303
Patent RE40,927 E

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For PETITIONER:

Christopher D. Bright
Amol A. Parikh
McDermott Will & Emery LLP
cbright@mwe.com
amparikh@mwe.com

For PATENT OWNER:

Thomas Engellenner
Reza Mollaaghababa
Pepper Hamilton LLP
engellerrert@pepperlaw.com
mollaaghababar@pepperlaw.com

Theodosios Thomas
OPTICAL DEVICES, LLC
ted.thomas@sceneralabs.com