`Trials@uspto.gov
`IPR2016-00863, Paper 44
`Tel: 571-272-7822
`IPR2016-00865, Paper 45
`Entered: May 5, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`
`
`
`SYNAPTICS INCORPORATED,
`Petitioner,
`
`v.
`
`AMKOR TECHNOLOGY, INC.,
`Patent Owner.
`_______________
`
`Cases
`IPR2016-00863 (Patent 7,358,174 B2)
`IPR2016-00865 (Patent 7,358,174 B2)
`_______________
`
`
`
`Before RAMA G. ELLURU, ROBERT J. WEINSCHENK,
`and JASON J. CHUNG, Administrative Patent Judges.
`
`
`ELLURU, Administrative Patent Judge.
`
`ORDER
`Termination of the Proceeding
`35 U.S.C. § 317(a) and 37 C.F.R. § 42.72
`
`
`
`
`
`
`
`
`
`Case IPR2016-00863 (Patent 7,358,174 B2)
`Case IPR2016-00865 (Patent 7,358,174 B2)
`
`On April 28, 2017, the parties filed joint motions to terminate
`
`IPR2016-00863 and IPR2016-00865 (Paper 42, “Mot.”),1 along with what
`they indicate is a true copy of their settlement agreement (Ex. 1070). The
`parties indicate in their joint motions that “Petitioner, named real party in
`interest Validity Sensors, LLC, and Patent Owner entered into a settlement
`agreement.” Mot. 2. The motion further states that “[p]ursuant to the terms
`of the settlement agreement, Patent Owner agrees to dismiss with prejudice
`the pending district court action, including its patent infringement claims.”
`Id. On the same day, the parties also filed joint requests that the settlement
`agreement be treated as business confidential information and kept separate
`from the patent files. Paper 43.
`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.” We
`instituted trials in these proceedings (Paper 27), but we have not yet decided
`the merits of these proceedings.
`
`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 the termination of the trial.”
`The parties have filed what they indicate is a true copy of their written
`settlement agreement, which they represent “is the only agreement or
`
`
`1 The parties filed similar papers in each of the instant proceedings. We refer
`to those filed in Case IPR2016-00863 for convenience.
`
`2
`
`
`
`Case IPR2016-00863 (Patent 7,358,174 B2)
`Case IPR2016-00865 (Patent 7,358,174 B2)
`
`understanding between Petitioner and Patent Owner that was made in
`connection with, or in contemplation of termination of this proceeding.”
`Mot. 5. In view of the foregoing reasons, we determine that it is appropriate
`to terminate these proceedings without rendering final written decisions as to
`the patentability of the challenged claims in each of the proceedings. See
`37 C.F.R. §§ 42.72, 42.74.
`As requested by the parties, the settlement agreement will be treated
`as business confidential information and kept separate from the patent files.
`37 C.F.R. § 42.74(c).
`Accordingly, it is
`ORDERED that the joint motion to terminate the proceeding (Paper
`42) is granted;
`FURTHER ORDERED that the parties’ joint request that the
`settlement agreement (Ex. 1070) be treated as business confidential
`information (Paper 43) is granted; and
`FURTHER ORDERED that these proceedings are hereby terminated.
`
`
`
`
`3
`
`
`
`Case IPR2016-00863 (Patent 7,358,174 B2)
`Case IPR2016-00865 (Patent 7,358,174 B2)
`
`For PETITIONER:
`
`Hong Zhong
`Michael Fleming
`Benjamin Hattenbach
`IRELL & MANELLA LLP
`hzhong@irell.com
`SynapticsIPR@irell.com
`
`For PATENT OWNER:
`
`Justin Boyce
`Robert Ashbrook
`DECHERT LLP
`justin.boyce@dechert.com
`robert.ashbrook@dechert.com
`
`4
`
`
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