Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 11
`Entered: January 27, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NANYA TECHNOLOGY CORP.,
`Petitioner,
`
`v.
`
`NORTH STAR INNOVATIONS INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00965 (Patent 6,372,638 B1)
`Case IPR2016-01022 (Patent 6,492,686 B1)1
`____________
`
`
`
`Before J. JOHN LEE, CHARLES J. BOUDREAU, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`WORMMEESTER, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`1 This order addresses issues that are the same in all identified cases. We
`exercise our discretion to issue one order to be filed in each case. The
`parties are not authorized to use this style heading in subsequent papers.
`
`
`571-272-7822
`
`
`
`Paper 11
`Entered: January 27, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NANYA TECHNOLOGY CORP.,
`Petitioner,
`
`v.
`
`NORTH STAR INNOVATIONS INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00965 (Patent 6,372,638 B1)
`Case IPR2016-01022 (Patent 6,492,686 B1)1
`____________
`
`
`
`Before J. JOHN LEE, CHARLES J. BOUDREAU, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`WORMMEESTER, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`1 This order addresses issues that are the same in all identified cases. We
`exercise our discretion to issue one order to be filed in each case. The
`parties are not authorized to use this style heading in subsequent papers.
`
`
`
`Case IPR2016-00965 (Patent 6,372,638 B1)
`Case IPR2016-01022 (Patent 6,492,686 B1)
`
`
`On January 24, 2017, the parties filed a Joint Motion to Amend Due
`
`
`
`Dates 1–5 of the Scheduling Order in each of the above-identified cases.
`
`Paper 10.2 A motion is not required to alter those dates, which may be
`
`accomplished by filing a joint stipulation. We understand the Joint Motions,
`
`however, as seeking authorization to file joint motions to terminate these
`
`proceedings with respect to both Petitioner and Patent Owner on the basis
`
`that the parties have settled. See id. at 2 (“The parties have reached
`
`settlement and are striving in good faith to take actions required by such
`
`settlement, whereupon they shall request the Board to terminate this case.”).
`
`Parties typically should not file a motion to seek authorization to file another
`
`motion, including a motion to terminate, and may request authorization by
`
`contacting the Board, for example, by electronic mail. In this instance,
`
`however, we accept the Joint Motions as a request for authorization.
`
`Generally, 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). Any 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 of the agreement shall be filed with the Board prior to termination.
`
`See 37 C.F.R. § 42.74(b).
`
`Each joint motion to terminate must include a brief explanation as to
`
`why termination of the proceeding is appropriate. Information should be
`
`provided on the status of related district court actions in which U.S. Patent
`
`
`2 Paper numbers refer to Case IPR2016-00965. A corresponding joint
`motion was filed in Case IPR2016-01022.
`
`
`2
`
`
`
`
`Case IPR2016-00965 (Patent 6,372,638 B1)
`Case IPR2016-01022 (Patent 6,492,686 B1)
`
`
`
`Nos. 6,372,638 B1 or 6,492,686 B1 has been asserted, particularly regarding
`
`the status of all defendants.
`
`Each joint motion to terminate must be accompanied by a true copy
`
`of the settlement agreement, as well as any collateral agreements (including
`
`any licensing agreements) referred to in the settlement agreement, as
`
`required by 37 C.F.R. § 42.74(b). A redacted version of the settlement
`
`agreement will not be accepted as a true copy of the settlement agreement.
`
`For each joint motion to terminate, the parties should also include a
`
`statement that there are no other agreements, oral or written, between the
`
`parties made in connection with, or in contemplation of, the termination of
`
`the proceeding, assuming such statement is correct. If the parties cannot
`
`make such statement, the other agreement(s) also should be filed under
`
`37 C.F.R. § 42.74.
`
`With regard to having the settlement agreement treated as business
`
`confidential information and kept separate from the patent file(s) under
`
`37 C.F.R. § 42.74(c), the parties must file the confidential settlement
`
`agreement in accordance with the instructions provided on the Board’s
`
`website (uploading as “Board Only”). The parties also are directed to FAQ
`
`G2 on the Board’s website page at https://www.uspto.gov/patents-
`
`application-process/patent-trial-and-appeal-board/ptab-e2e-frequently-
`
`asked-questions for instructions on how to file a settlement agreement as
`
`confidential.
`
`Accordingly, it is
`
`ORDERED that Petitioner and Patent Owner are authorized to file a
`
`joint motion to terminate the inter partes review proceeding for each of the
`
`above-identified cases;
`
`3
`
`
`
`
`Case IPR2016-00965 (Patent 6,372,638 B1)
`Case IPR2016-01022 (Patent 6,492,686 B1)
`
`
`FURTHER ORDERED that each joint motion to terminate must be
`
`
`
`accompanied by a true copy of the settlement agreement, labeled as an
`
`exhibit, as required by 37 C.F.R. § 42.74(b);
`
`FURTHER ORDERED that, in a separate motion for each case,
`
`Petitioner and Patent Owner may request that the settlement agreement be
`
`treated as business confidential information and kept separate from the
`
`underlying patent file, as provided in 37 C.F.R. § 42.74(c);
`
`FURTHER ORDERED that any confidential settlement agreement
`
`must be filed in accordance with the instructions provided on the Board’s
`
`website (uploading as “Board Only”); and
`
`FURTHER ORDERED that each motion shall be filed on or before
`
`4
`
`
`February 2, 2017.
`
`
`
`Petitioner:
`
`Steven Baik
`sbaik@sidley.com
`
`Stephen Everett
`Stephen.everett@sidley.com
`
`
`
`Patent Owner:
`
`Cameron Tousi
`chtousi@ipllfirm.com
`
`Raymond Ho
`rho@ipllfirm.com
`
`Andrew Aitken
`acaitken@ipllfirm.com
`
`
`
`Case IPR2016-00965 (Patent 6,372,638 B1)
`Case IPR2016-01022 (Patent 6,492,686 B1)
`
`
`
`
`
`
`5
`
`
`
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