Wintek Corporationv.TPK Touch Solutions, Inc.

Patent Trial and Appeal Board

Dec 3, 2014

12168896 (P.T.A.B. Dec. 3, 2014)

Trials@uspto.gov Paper 8
Tel: 571-272-7822 Entered: December 3, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
WINTEK CORPORATION,
Petitioner,
v.
TPK TOUCH SOLUTIONS,
Patent Owner.
_______________

Case IPR2013-01245
Patent 8,283,935 B2
_______________

Before TONI R. SCHEINER, JOSIAH C. COCKS, and
RICHARD E. RICE, Administrative Patent Judges.

RICE, Administrative Patent Judge.

DECISION
Termination of the Proceeding
35 U.S.C. § 317 and 37 C.F.R. § 42.72

IPR2013-01245
Patent 8,283,935 B2

2

On November 25, 2014, Petitioner, Wintek Corporation, and Patent
Owner, TPK Touch Solutions, Inc. (collectively referred to as “the Parties”)
filed a joint motion to terminate this inter partes review involving
U.S. Patent No. 8,283,935 B2. Paper 6 (“Joint Motion to Terminate”); see
35 U.S.C § 317; 37 C.F.R. § 42.72. Authorization to file the motion was
given via e-mail correspondence from Board personnel on November 21,
2014. Along with the Joint Motion to Terminate, the Parties filed a true
copy of their written settlement agreement (Ex. 1013), as well as a joint
request (Paper 7) 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 state in their Joint Motion to Terminate:
The parties respectfully submit that termination is
appropriate because Patent Owner has agreed to license U.S.
Patent No. 8,283,935 to Petitioner (see Settlement Agreement §
2.1), the parties have settled all disputes with respect to U.S.
Patent No. 8,283,935 and the parties have agreed to terminate
this inter partes review, which has not yet been instituted. No
public interest or other factors militate against termination of
this proceeding.

Paper 6, 2.
The Parties also state that “Patent Owner represents that it does not
contemplate initiating any proceedings involving U.S. Patent No. 8,283,935
in the foreseeable future, either against Petitioner or any third party.” Id.
The Parties further state that they have agreed to dismiss with prejudice
litigation relating to U.S. Patent 8,283,935 B2 styled TPK Touch Solutions
Inc. v. Wintek Corp., Civ. A. No. 3:13-CV-02218-VC (N.D. Cal.). Id. at 1.
The Parties are reminded that the Board is not a party to the
settlement, and may identify independently any question of patentability.
IPR2013-01245
Patent 8,283,935 B2

3

37 C.F.R. § 42.74(a). Generally, however, 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 proceeding is in a preliminary stage,1 and the Board has not
issued yet a decision to institute an inter partes review. Upon consideration
of the circumstances of this case, the panel has determined to terminate this
inter partes review.
It is
ORDERED that, as was requested timely by the Parties (Paper 7), the
settlement agreement (Paper 1013) will be treated as business confidential
information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c); and
FURTHER ORDERED that the joint motion to terminate IPR2014-
01245 (Paper 6) is granted and this proceeding is hereby terminated.

1 A preliminary proceeding begins with the filing of a petition for instituting
a trial and ends with a written decision as to whether a trial will be instituted.
37 C.F.R. § 42.2.
IPR2013-01245
Patent 8,283,935 B2

4

PETITIONER:

Joseph E. Palys
Naveen Modi
PAUL HASTINGS LLP
josephpalys@paulhastings.com
naveenmodi@paulhastings.com

PATENT OWNER:

David M. Tennant
Dohm Chankong
WHITE & CASE LLP
dtennant@whitecase.com
wcpatents@whitecase.com
dohm.chankong@whitecase.com