UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`NANYA TECHNOLOGY CORP.
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`Petitioner,
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`v.
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`NORTH STAR INNOVATIONS INC.
`
`Patent Owner.
`
`
`
`Case IPR2016-00965
`
`Patent 6,372,638
`
`Title: METHOD FOR FORMING A CONDUCTIVE PLUG BETWEEN LAYERS
`OF AN INTEGRATED CIRCUIT
`
`
`JOINT MOTION TO TERMINATE PROCEEDING IN VIEW OF
`SETTLEMENT PURSUANT TO 35 U.S.C. §317(a),
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`JOINT NOTICE OF SETTLEMENT PURSUANT TO 35 U.S.C.
`§317(b) AND 37 C.F.R. § 42.74, AND
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`JOINT REQUEST TO KEEP SEPARATE PURSUANT TO 35 U.S.C. §317(b)
`AND 37 C.F.R. § 42.74(c)
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`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
`
`Title: METHOD FOR FORMING A CONDUCTIVE PLUG BETWEEN LAYERS
`OF AN INTEGRATED CIRCUIT
`
`
`JOINT MOTION TO TERMINATE PROCEEDING IN VIEW OF
`SETTLEMENT PURSUANT TO 35 U.S.C. §317(a),
`
`JOINT NOTICE OF SETTLEMENT PURSUANT TO 35 U.S.C.
`§317(b) AND 37 C.F.R. § 42.74, AND
`
`JOINT REQUEST TO KEEP SEPARATE PURSUANT TO 35 U.S.C. §317(b)
`AND 37 C.F.R. § 42.74(c)
`
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`
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`Patent Owner North Star Innovations Inc. ("NSI" or "Patent Owner") and
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`Petitioner Nanya Technology Corp. ("Nanya" or "Petitioner") (collectively "the
`
`Parties") have reached a settlement and jointly request that the Board terminate
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`this Inter Partes Review (“IPR”) of U.S. Patent 6,372,638 (“the '638 Patent”)
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`and cancel all pending due dates set forth in the Amended Scheduling Order
`
`(Paper No. 10), as Ordered by the Board (Paper No. 11). The Parties also jointly
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`request that the Board treat the Settlement Agreement as business confidential
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`information and keep it separate from the file of the involved patent.
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`Statement of Precise Relief Requested
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`Respectfully, the Parties jointly request that the Board terminate this IPR
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`and cancel all pending due dates set forth in the Amended Scheduling Order
`
`(Paper No. 10), as Ordered (Paper No. 11), with the due date of the Order
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`having been modified to February 21, 2017 by virtue of the Board's February 2,
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`2017 email; in particular, Due Dates 1 - 5, including Due Date 4 of June 9,
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`2017, with respect to Request for Oral Argument, are to be cancelled.
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`The Parties jointly request that the Board treat the Settlement Agreement,
`
`Ex. 2001, as business confidential information and keep it separate from the file
`
`of the involved patent, and made available only to Federal Government
`
`agencies on written request or to any person only on a showing of good cause.
`
`Statement of Reasons for the Relief Requested
`
`2
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`
`
`
`
`
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`The Parties have reached a settlement agreement regarding their disputes
`
`relating to the '638 Patent and all other matters pending between them. In
`
`particular, the parties have dismissed all actions as between them, namely: (1)
`
`North Star Innovations Inc. v. Nanya Technology Corp. U.S.A. et al., C.A. No.
`
`1:15-cv-01027-LPS-CJB (D. Del. Nov. 5, 2015); and (2) North Star Innovations
`
`Inc. v. Nanya Technology Corp. U.S.A. et al., C.A. No. 8:16-cv-01591-JVS-AJW
`
`(C.D. Cal. Aug. 29, 2016). Furthermore, concurrently with this Joint Motion, the
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`parties are filing another Joint Motion to Terminate Proceedings for IPR2016-
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`01022 of U.S. Patent 6,492,686 (“the '686 Patent”), which bears identical
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`language to the present Motion. Because the Board has not decided this IPR on its
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`merits, and moreover that the IPR is in an early part of the proceedings following
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`the decision for Institution, the Parties jointly request that the Board terminate this
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`IPR pursuant to 35 U.S.C. §317(a). The Parties also jointly request that the Board
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`cancel Due Dates 1 - 7, which includes Due Date 4 with respect to Request for
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`Oral Argument.
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`The Parties file a copy of the settlement agreement (Ex. 2001) with the
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`PTAB, as required by 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74.
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`The Parties jointly request that this Settlement Agreement be treated as
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`business confidential information and be kept separate from the file of the
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`involved patent, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.70(c). Ex.
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`3
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`2001 is being submitted concurrently herewith having “availability” in the PRPS
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`system of “Parties and Board Only.” The Parties jointly request that this
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`settlement agreement (Ex. 2001) be made available only to Federal Government
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`agencies on written request or to any person only on a showing of good cause.
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`If any fees are due in connection with this matter, the Commissioner is
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`hereby authorized to charge them to Attorney Deposit Account 50-5998.
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`Concluding Remarks
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`If the Board has any questions or concerns for the parties, the parties
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`respectfully request an opportunity to be notified of and address such concerns.
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`Respectfully submitted,
`IP LAW LEADERS PLLC
`
`/Cameron H. Tousi/
`Cameron H. Tousi, Esq.
`Registration No. 43,197
`Lead Counsel for Patent Owner
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`Date: February 15, 2017
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`7529 Standish Place, Ste. 103
`Rockville, MD 20855
`(202) 248-5410
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`4
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`EXHIBIT APPENDIX
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`Exhibit
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`Description
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`2001
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`Settlement Agreement (Business Confidential)
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`5
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`CERTIFICATION OF SERVICE
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`The undersigned hereby certifies that the foregoing JOINT MOTION
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`TO TERMINATE PROCEEDING
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`IN VIEW OF SETTLEMENT
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`PURSUANT TO 35 U.S.C. §317(a); JOINT NOTICE OF SETTLEMENT
`
`PURSUANT TO 35 U.S.C. §317(b) AND 37 C.F.R. § 42.74; AND JOINT
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`REQUEST TO KEEP SEPARATE PURSUANT TO 35 U.S.C. §317(b)
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`AND 37 C.F.R. § 42.74(c) and EXHIBIT 2001 were served electronically
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`via e-mail on February 1, 2017, on the following Petitioner's counsel of
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`record:
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`Steven S. Baik (Reg. No. 42,281) (Lead Counsel)
`sbaik@sidley.com
`Stephen M. Everett (Reg. No. 30,050) (Back-up Counsel)
`stephen.everett@sidley.com
`SIDLEY AUSTIN LLP
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`Respectfully submitted,
`IP LAW LEADERS PLLC
`
`/Cameron H. Tousi/
`Cameron H. Tousi, Esq.
`Registration No. 43,197
`Lead Counsel for Patent Owner
`
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`Date: February 15, 2017
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`7529 Standish Place, Ste. 103
`Rockville, MD 20855
`(202) 248-5410
`
`
`i
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