Sensormatic Electronics, LLC

Patent Trials and Appeals Board

Sep 16, 2021

IPR2020-01487 (P.T.A.B. Sep. 16, 2021)

Trials@uspto.gov Paper 31
Tel: 571-272-7822 Date: September 16, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

WYZE LABS, INC.,
Petitioner,

v.

SENSORMATIC ELECTRONICS, LLC,
Patent Owner.
____________

IPR2020-01486 (Patent 8,208,019 B2),
IPR2020-01487 (Patent 7,954,129 B2),
IPR2020-01488 (Patent 7,730,534 B2),
IPR2020-01489 (Patent 7,936,370 B2),
IPR2020-01490 (Patent 8,610,772 B2)1
____________

Before MITCHELL G. WEATHERLY, DAVID C. MCKONE,
TERRENCE W. MCMILLIN, and JULIET MITCHELL DIRBA,
Administrative Patent Judges.2

PER CURIAM

TERMINATION
After Institution of Trial
35 U.S.C. § 317; 37 C.F.R. § 42.72

1 This Order applies to the above-listed proceedings. We exercise our discretion to
issue one Order to be filed in each case. The parties are not authorized to use this
style heading for any subsequent papers.
2 This is not an expanded panel.
IPR2020-01486 (Patent 8,208,019 B2), IPR2020-01487 (Patent 7,954,129 B2),
IPR2020-01488 (Patent 7,730,534 B2), IPR2020-01489 (Patent 7,936,370 B2),
IPR2020-01490 (Patent 8,610,772 B2)

2

I. INTRODUCTION
Petitioner and Patent Owner (collectively referred to as “the Parties”) have
requested that the above-identified inter partes review proceedings be terminated
pursuant to a final judgment of invalidity in a District Court action. On September
3, 2021, we authorized the Parties via email to file joint motions to terminate the
above-identified proceedings. On September 10, 2021, the Parties filed Joint
Motions to Terminate the above-identified proceedings. Paper 30 (“Joint
Motion”).3
II. DISCUSSION
The U.S. District Court has determined that the claims of the patents
involved in the above-identified proceedings recite subject matter that is ineligible
for patent protection under 35 U.S.C. § 101. Sensormatic Electronics, LLC v.
Wyze Labs, Inc., No. 19-1543, 484 F. Supp. 3d 161 (D. Del. Sep. 3, 2020). The
District Court’s decision has been affirmed by the Court of Appeals for the Federal
Circuit. Sensormatic Electronics, LLC v. Wyze Labs, Inc., No. 2020-2320, 2021
WL 2944838, at *4 (Fed. Cir. July 14, 2021). The Parties have jointly agreed to
terminate the above-identified proceedings based on Patent Owner’s decision not
to seek rehearing or appeal of the Federal Circuit’s decision. Joint Motion 1. The
Parties have not identified any other related matters.
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.” It is also provided in

3 All citations are to IPR2020-01486 with the understanding that the other
proceedings include papers having substantially the same substantive content.
IPR2020-01486 (Patent 8,208,019 B2), IPR2020-01487 (Patent 7,954,129 B2),
IPR2020-01488 (Patent 7,730,534 B2), IPR2020-01489 (Patent 7,936,370 B2),
IPR2020-01490 (Patent 8,610,772 B2)

3

35 U.S.C. § 317(a) that if no petitioner remains in the inter partes review, the
Office may terminate the review.
Under the present circumstances, the Board determines that it is appropriate
to grant the Joint Motions of the Parties and to terminate the proceedings. This
Order does not constitute a final written decision pursuant to 35 U.S.C. § 318(a).
III. ORDER
Accordingly, for the reasons discussed above, it is:
ORDERED that the Joint Motions to Terminate (Paper 30) are granted, and
IPR2020-01486, IPR2020-01487, IPR2020-01488, IPR2020-01489, and IPR2020-
01490 are terminated pursuant to 37 C.F.R. § 42.72.

IPR2020-01486 (Patent 8,208,019 B2), IPR2020-01487 (Patent 7,954,129 B2),
IPR2020-01488 (Patent 7,730,534 B2), IPR2020-01489 (Patent 7,936,370 B2),
IPR2020-01490 (Patent 8,610,772 B2)

4

For PETITIONER:
Erik Milch
Dustin Knight
COOLEY LLP
emilch@cooley.com
dknight@cooley.com

For PATENT OWNER:
David Krinsky
Arthur Argall
WILLIAMS & CONNOLLY LLP
dkrinsky@wc.com
aargall@wc.com