- PTAB · Feb 22, 2023 · IPR2019-01200 · APJ Lynne E Pettigrew · IPR · Remand
The Board granted the parties’ joint motion and terminated the remanded proceedings concerning claim 20 because the Board had not yet decided the remanded merits.
RulingsRemand decision- RemandGranted
“Generally, the Board expects that a proceeding will terminate after the filing of a settlement agreement, unless the Board already has decided the merits of the proceeding. PTAB Consolidated Trial Practice Guide, 86 (Nov. 2019).6 Here, although the Board already has issued a Final Written Decision, the Federal Circuit reversed the part of that decision addressing claim 20 of the ’552 patent and remanded to the Board for further proceedings regarding claim 20. The Board has not issued a decision on remand and, thus, has not decided the merits of the issues that were remanded to the Board. Under these circumstances, we determine it is appropriate to grant the Motion and terminate the proceedings.” slip op. at 3
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted in part
“The parties also jointly request that the Agreement be treated as business confidential information and be kept separate from the files of the ’552 patent and these proceedings. Req. 2. We have reviewed the Agreement, which contains confidential business information regarding the settlement terms, and we determine that good cause exists to treat the Agreement as business confidential information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) and keep it separate from the files of the ’552 patent and these proceedings. Accordingly, we grant this aspect of the parties’ Joint Request. The parties also “request that the Board order that in the event a person or entity makes a written request, as stated in 37 C.F.R. § 42.74(c)(1)-(2), for access to the settlement agreement, that any such written request be served upon Patent Owner and Petitioner on the day the written request is provided to the Board.” Req. 2. However, neither the statute nor the regulation provides for any such notification, and the parties have not provided any reason or special circumstance that would justify issuing an order that purports to impose an additional requirement. Accordingly, we deny that portion of the parties’ Joint Request.” slip op. at 4
NonePatents in suitUS 7,247,552 - PTAB · Feb 22, 2023 · IPR2019-01199 · APJ Lynne E Pettigrew · IPR · Remand
On remand, the Board terminated the proceedings after settlement because it had not decided the remanded merits concerning claim 20.
RulingsRemand decision- RemandGranted
“Generally, the Board expects that a proceeding will terminate after the filing of a settlement agreement, unless the Board already has decided the merits of the proceeding. PTAB Consolidated Trial Practice Guide, 86 (Nov. 2019).6 Here, although the Board already has issued a Final Written Decision, the Federal Circuit reversed the part of that decision addressing claim 20 of the ’552 patent and remanded to the Board for further proceedings regarding claim 20. The Board has not issued a decision on remand and, thus, has not decided the merits of the issues that were remanded to the Board. Under these circumstances, we determine it is appropriate to grant the Motion and terminate the proceedings.” slip op. at 3
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted in part
“The parties also jointly request that the Agreement be treated as business confidential information and be kept separate from the files of the ’552 patent and these proceedings. Req. 2. We have reviewed the Agreement, which contains confidential business information regarding the settlement terms, and we determine that good cause exists to treat the Agreement as business confidential information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) and keep it separate from the files of the ’552 patent and these proceedings. Accordingly, we grant this aspect of the parties’ Joint Request. The parties also “request that the Board order that in the event a person or entity makes a written request, as stated in 37 C.F.R. § 42.74(c)(1)-(2), for access to the settlement agreement, that any such written request be served upon Patent Owner and Petitioner on the day the written request is provided to the Board.” Req. 2. However, neither the statute nor the regulation provides for any such notification, and the parties have not provided any reason or special circumstance that would justify issuing an order that purports to impose an additional requirement. Accordingly, we deny that portion of the parties’ Joint Request.” slip op. at 4
NonePatents in suitUS 7,247,552 - PTAB · Feb 22, 2023 · IPR2019-01198 · APJ Lynne E Pettigrew · IPR · Remand
The Board granted the parties’ joint motion and terminated the remanded proceedings; it also granted in part their request to protect the settlement agreement.
RulingsRemand decision- RemandGranted
“Generally, the Board expects that a proceeding will terminate after the filing of a settlement agreement, unless the Board already has decided the merits of the proceeding. PTAB Consolidated Trial Practice Guide, 86 (Nov. 2019).6 Here, although the Board already has issued a Final Written Decision, the Federal Circuit reversed the part of that decision addressing claim 20 of the ’552 patent and remanded to the Board for further proceedings regarding claim 20. The Board has not issued a decision on remand and, thus, has not decided the merits of the issues that were remanded to the Board. Under these circumstances, we determine it is appropriate to grant the Motion and terminate the proceedings.” slip op. at 3
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted in part
“business confidential information and be kept separate from the files of the ’552 patent and these proceedings. Req. 2. We have reviewed the Agreement, which contains confidential business information regarding the settlement terms, and we determine that good cause exists to treat the Agreement as business confidential information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) and keep it separate from the files of the ’552 patent and these proceedings. Accordingly, we grant this aspect of the parties’ Joint Request.” slip op. at 4
NonePatents in suitUS 7,247,552 - PTAB · Jan 8, 2018 · IPR2017-01692 · APJ Jameson Lee · IPR · Order
The Board granted the parties’ joint motion to terminate the proceedings before institution and granted both requests to keep the settlement agreements confidential.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Under the circumstances, we grant the parties’ Motion to Terminate, Motion to File the Settlement Agreement as Confidential, and Motion to File the Final Settlement Agreement as Confidential in each proceeding. These proceedings are in their early stages: a decision on institution has not issued,” slip op. at 2
NonePatents in suitUS 6,138,147 - PTAB · Nov 14, 2014 · CBM2013-00055 · APJ Jennifer S Bisk · CBM · Order
The Board granted the parties’ joint motion, terminated the proceeding under the settlement, and did not issue a final written decision on the merits.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“November 12, 2014, the parties jointly requested that this trial proceeding be terminated pursuant to a settlement. Paper 32. With their motion to terminate, the parties also filed a copy of a written settlement agreement that they request be kept confidential. Paper 33; Ex. 2007. This proceeding has not resulted in a final decision on the merits. The parties indicate that they have agreed to resolve all disputes between the parties and that all district court litigations involving the challenged patent have been terminated. Paper 32, 2–3 (representing that, in several district court cases, a judgment on the pleadings has been entered finding claims 1–4, 10, and 11 of the challenged patent invalid under 35 U.S.C. § 101). Under these circumstances, we determine that it is appropriate to enter judgment1 and terminate the trial without rendering a final written decision. 37 C.F.R. § 42.72. Accordingly, it is ORDERED that the joint motion to terminate the proceeding is granted; FURTHER ORDERED that the proceeding is terminated; and FURTHER ORDERED that the joint request that the settlement agreement” slip op. at 2
NonePatents in suitUS 8,266,015 - PTAB · Aug 14, 2014 · CBM2014-00061 · APJ Jennifer S Bisk · CBM · Order
The Board granted the parties’ joint motion to terminate the instituted trial and granted confidential treatment of the settlement agreement.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“to a settlement. On August 12, 2014, we authorized the parties to file a joint request to terminate and to file the settlement agreement as business confidential information under 37 C.F.R. § 42.74(c). Paper 13. The parties filed their motion later that day. Paper 14. With their motion to terminate, the parties also filed a copy of a written settlement agreement that they request be kept confidential. Paper 14, 3-4; Ex. 1022. We instituted trial in this proceeding on July 25, 2014. Thus, this proceeding is in the initial stages with no post-institution briefing yet filed. The parties indicate that they have agreed to resolve all disputes between the parties related to the challenged patent, which is not involved in any other litigation. Paper 14, 3. This assertion is consistent with the settlement agreement. Ex. 1022. Under these circumstances, we determine that it is appropriate to enter judgment and terminate the trial without rendering a final written decision. 37 C.F.R. § 42.72 Accordingly, it is ORDERED that the joint motion to terminate the proceeding is granted; FURTHER ORDERED that the joint request that the settlement agreement be treated as business confidential information and be kept separate from the file of the involved patents under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is granted.” slip op. at 2
NonePatents in suitUS 7,117,165 - PTAB · Jun 20, 2014 · IPR2013-00520 · APJ Karl D Easthom · IPR · Order
The Board granted the parties’ joint motions and terminated both proceedings without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“involve challenges to U.S. Patent No. 7,128,617 B2 (“the ’617 Patent”), the parties filed a joint motion to terminate the respective proceeding, along with a true copy of their written settlement agreement, made in connection therewith, in accordance with 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b). Paper 21 (attaching Ex. 1018, written settlement agreement).2 The parties also filed a joint motion in each case to treat the settlement agreement as confidential business information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 22.” slip op. at 2
NonePatents in suitUS 7,128,617 - PTAB · Apr 4, 2014 · IPR2014-00015 · APJ Brian J Mcnamara · IPR · Order
The Board granted the parties’ joint motion to terminate the proceeding and their request to keep the settlement agreement confidential.
RulingsOther- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached
“A decision by the Board to institute a trial has not yet been reached. Therefore, this matter was in the preliminary stages at the time the parties moved to terminate. The parties have represented that the co-pending litigation, styled Yama Capital, LLC v. Canon, Inc. and Canon USA, Inc. 1:12-cv-07159, SDNY has been dismissed with prejudice. Joint Mandatory Notice (Paper 15). The parties have not identified any other related matters and have represented that they do not contemplate any further litigation concerning the’982 Patent in the foreseeable future. Paper 14. Under these circumstances, the Board determines that it is appropriate to enter judgment1 and terminate the trial without rendering a final written decision. 37 C.F.R. § 42.72.” slip op. at 2
NonePatents in suitUS 6,069,982 - PTAB · Mar 6, 2014 · IPR2013-00462 · APJ Peter P Chen · IPR · Order
The Board granted the parties’ joint motion and terminated the IPR without a final written decision.
RulingsOther- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Other
“This trial was instituted on January 29, 2014, and is in the preliminary stages. The initial conference call with the Board to discuss the case has not been held. There is no co-pending district court litigation. Under these circumstances, the Board determines that it is appropriate to terminate the trial without rendering a final written decision. 37 C.F.R. § 42.72.” slip op. at 2
NonePatents in suitUS 7,266,265 - PTAB · Mar 6, 2014 · IPR2013-00461 · APJ Peter P Chen · IPR · Order
The Board granted the parties’ joint motion and terminated the IPR before a final written decision; it also granted confidential treatment of the settlement agreement.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“This trial was instituted on January 29, 2014, and is in the preliminary stages. The initial conference call with the Board to discuss the case has not been held. There is no co-pending district court litigation. Under these circumstances, the Board determines that it is appropriate to terminate the trial without rendering a final written decision. 37 C.F.R. § 42.72. It is, therefore, ORDERED that the joint motion to terminate the proceeding is GRANTED and the proceeding is hereby terminated;” slip op. at 2
NonePatents in suitUS 6,678,442
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.