Trials@uspto.gov
`571.272.7822
`
`
`
`
` Paper No. 25
` Entered: April 10, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`COMMISSARIAT À L’ENERGIE ATOMIQUE ET AUX ENERGIES
`ALTERNATIVES,
`Petitioner,
`
`v.
`
`SILICON GENESIS CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-00831 (Patent 6,162,705)
`Case IPR2016-00832 (Patent 6,013,563)
`Case IPR2016-00833 (Patent 6,103,599)
`
`____________
`
`
`
`Before JONI Y. CHANG, J. JOHN LEE, and SHEILA F. McSHANE,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`571.272.7822
`
`
`
`
` Paper No. 25
` Entered: April 10, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`COMMISSARIAT À L’ENERGIE ATOMIQUE ET AUX ENERGIES
`ALTERNATIVES,
`Petitioner,
`
`v.
`
`SILICON GENESIS CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-00831 (Patent 6,162,705)
`Case IPR2016-00832 (Patent 6,013,563)
`Case IPR2016-00833 (Patent 6,103,599)
`
`____________
`
`
`
`Before JONI Y. CHANG, J. JOHN LEE, and SHEILA F. McSHANE,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`IPR2016-00831 (Patent 6,162,705)
`IPR2016-00832 (Patent 6,013,563)
`IPR2016-00833 (Patent 6,103,599)
`
`
`
`
`
`
`
`A conference was held with the parties on April 6, 2017, regarding the
`above-captioned cases (“CEA-SiGen IPRs”). At the conference, the parties
`indicated that a settlement agreement (“SiGen-Soitec Agreement”) has been
`reached between Patent Owner, Silicon Genesis Corporation (“SiGen”), and
`a third party, Soitec S.A., in which Soitec agreed to request that Petitioner,
`Commissariat à L’Energie Atomique et aux Energies Alternatives (“CEA”),
`seek to terminate the CEA-SiGen IPRs. CEA also reported that CEA and
`Soitec have reached an oral agreement (“CEA-Soitec Agreement”) wherein
`CEA agreed to seek termination as requested by Soitec. As a result of these
`two agreements, CEA and SiGen jointly requested authorization to file a
`motion to terminate each of the CEA-SiGen IPRs.
`An instituted inter partes review “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.” 35 U.S.C. § 317(a). Based on the present
`circumstances, we authorize the parties to file a joint motion to terminate
`trial in each of the CEA-SiGen IPRs. See 37 C.F.R. § 42.72.
`In conjunction with the motions to terminate trial, the parties are
`required to file in each proceeding a true copy of any agreement or
`understanding by the parties, “including any collateral agreements referred
`to in such agreement or understanding, made in connection with, or in
`contemplation of, the termination” of these inter partes reviews. 35 U.S.C.
`§ 317(b). Each such agreement must be in writing. Id.; 37 C.F.R.
`§ 42.74(b). Specifically, the parties must comply with these requirements as
`to both the SiGen-Soitec Agreement and the CEA-Soitec Agreement.
`Additionally, the parties’ joint motions to terminate trial must include the
`
`2
`
`
`
`
`
`
`
`IPR2016-00831 (Patent 6,162,705)
`IPR2016-00832 (Patent 6,013,563)
`IPR2016-00833 (Patent 6,103,599)
`
`
`
`parties’ certification that no other agreements exist, beyond those filed in
`these proceedings, that are encompassed by 35 U.S.C. § 317(b) and
`37 C.F.R. § 42.74(b).
`We understand, however, that the nature of the agreements in question
`here involve unusual issues regarding confidentiality due to the involvement
`of a third party. Specifically, the parties indicated that the SiGen-Soitec
`Agreement constitutes business confidential information of SiGen and
`Soitec to which CEA should not receive access. Similarly, the CEA-Soitec
`Agreement constitutes business confidential information of CEA and Soitec
`to which SiGen should not receive access. Thus, both agreements should be
`filed as “Board Only.” In addition, we authorize SiGen to file, in
`conjunction with its filing of the SiGen-Soitec Agreement, a motion to treat
`as business confidential information and keep separate from the file,
`pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), in each of the
`CEA-SiGen IPRs. CEA is authorized to file a similar motion, in conjunction
`with its filing of the written CEA-Soitec Agreement, in each proceeding.
`
`
`ORDER
`
`Accordingly, it is
`ORDERED that the parties are authorized to file a joint motion to
`terminate trial in each of the CEA-SiGen IPRs;
`FURTHER ORDERED that SiGen shall file a true copy of the SiGen-
`Soitec Agreement as “Board Only” in each of the CEA-SiGen IPRs, and is
`authorized to file in each proceeding an accompanying motion to treat as
`business confidential information and keep separate from the file;
`
`3
`
`
`
`
`
`
`
`
`
`FURTHER ORDERED that CEA shall file a true copy of the CEA-
`Soitec Agreement in writing as “Board Only” in each of the CEA-SiGen
`IPRs, and is authorized to file in each proceeding an accompanying motion
`to treat as business confidential information and keep separate from the file.
`
`
`IPR2016-00831 (Patent 6,162,705)
`IPR2016-00832 (Patent 6,013,563)
`IPR2016-00833 (Patent 6,103,599)
`
`
`
`
`
`4
`
`
`
`
`
`
`
`
`
`
`IPR2016-00831 (Patent 6,162,705)
`IPR2016-00832 (Patent 6,013,563)
`IPR2016-00833 (Patent 6,103,599)
`
`
`
`PETITIONER:
`Paul McGowan
`Parker Hancock
`Marcus T. Hall
`Douglas D. Salyers
`TROUTMAN SANDERS LLP
`paul.mcgowan@troutmansanders.com
`parker.hancock@troutmansanders.com
`marcus.hall@troutmansanders.com
`doug.salyers@troutmansanders.com
`
`
`
`PATENT OWNER:
`Margaux Nair
`George C. Summerfield
`K&L GATES LLP
`Margaux.Nair@klgates.com
`George.Summerfield@klgates.com
`
`
`5
`
`
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