`Tel: 571-272-7822
`
`Paper 18
`Entered: April 19, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ams AG, AMS-TAOS USA INC.,
`SAMSUNG ELECTRONICS AMERICA, INC., and
`SAMSUNG ELECTRONICS CO. LTD.,
`Petitioner,
`
`v.
`
`511 INNOVATIONS, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01810 (Patent 6,307,629 B1)
`Case IPR2016-01818 (Patent 7,113,283 B2)
`Case IPR2016-01819 (Patent 6,915,955 B2)1
`____________
`
`
`Before KARL D. EASTHOM, DAVID C. McKONE, KERRY BEGLEY,
`and JOHN A. HUDALLA, Administrative Patent Judges.2
`
`PER CURIAM.
`
`ORDER
`Denying Without Prejudice Motions to Terminate the Proceedings
`37 C.F.R. § 42.72
`
`
`1 This Order pertains to each of these cases. Therefore, we exercise our
`discretion to issue a single Order to be filed in each case. The parties are not
`authorized to use this style heading for any subsequent papers.
`2 This is not a decision by an expanded panel of the Board. Judges Easthom,
`McKone, and Hudalla are paneled on IPR2016-01810 and IPR2016-01819.
`Judges Easthom, Begley, and Hudalla are paneled on IPR2016-01818.
`
`
`
`IPR2016-01810 (Patent 6,307,629 B1)
`IPR2016-01818 (Patent 7,113,283 B2)
`IPR2016-01819 (Patent 6,915,955 B2)
`
`On April 12, 2017, the parties filed, in each of the instant cases, a joint
`motion to terminate the trial on the basis of a settlement reached by the
`parties. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. The parties also filed a
`copy of their written settlement agreement and a separate request to treat the
`settlement papers as business confidential information under 35 U.S.C.
`§ 317(b) and 37 C.F.R. § 42.74(c). See Case IPR2016-01810, Papers 16, 17,
`Ex. 1018; Case IPR2016-01818, Papers 16, 17, Ex. 1019; Case IPR2016-
`01819, Papers 16, 17, Ex. 1015.3 We authorized the joint motions to
`terminate in an email dated March 7, 2017. Because the joint motions are
`deficient, we deny the motions to terminate without prejudice.
`As acknowledged by the parties (Paper 17, 2), the parties are required
`to file a true and complete copy of their settlement papers in accordance with
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b). Specifically, this includes
`“[a]ny agreement or understanding between the parties made in connection
`with, or in contemplation of, the termination.” 37 C.F.R. § 42.74(b). The
`parties contend they have complied with this requirement. Paper 17, 2.
`Nevertheless, the copies of the settlement agreement provided by the parties
`appear to be lacking Exhibits G and H, both of which involve deposit
`amounts. See Ex. 1018, 46–47. Nor do the parties’ motions explain why
`these exhibits are missing from the copies of the settlement agreement as
`filed. Accordingly, we determine that the parties have failed to comply with
`the requirements of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b). Therefore,
`
`
`3 Because the citations relevant to this Order are nearly identical in each
`proceeding, we only will refer to those filed in Case IPR2016-01810 for the
`remainder of this Order.
`
`2
`
`
`
`
`IPR2016-01810 (Patent 6,307,629 B1)
`IPR2016-01818 (Patent 7,113,283 B2)
`IPR2016-01819 (Patent 6,915,955 B2)
`
`we deny without prejudice the parties’ joint motions to terminate and
`dismiss as moot the joint motions to treat the settlement papers as business
`confidential information.
`The parties are authorized to re-file their joint motions to terminate in
`these cases within 10 days of the date of this Order. In order to facilitate the
`re-filing of the motions to terminate, we expunge the papers the parties
`sought to keep confidential (i.e., the incomplete copies of their settlement
`agreement). See 37 C.F.R. § 42.7(a).
`
`In consideration of the foregoing, it is hereby:
`ORDERED that Exhibit 1018 in Case IPR2016-01810; Exhibit 1019
`in Case IPR2016-01818; and Exhibit 1015 in Case IPR2016-01819 are
`expunged;
`FURTHER ORDERED that the motions for termination of these
`proceedings are denied without prejudice;
`FURTHER ORDERED that the requests to file the settlement papers
`as business confidential information are dismissed as moot;
`FURTHER ORDERED that the parties are authorized to re-file
`corrected joint motions to terminate these proceedings within 10 days of the
`date of this Order; and
`FURTHER ORDERED that the corrected joint motions must be
`accompanied by true and complete copies of the parties’ settlement
`agreement as required by 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b).
`
`
`
`
`
`
`3
`
`
`
`
`IPR2016-01810 (Patent 6,307,629 B1)
`IPR2016-01818 (Patent 7,113,283 B2)
`IPR2016-01819 (Patent 6,915,955 B2)
`
`PETITIONER:
`
`Daniel Venglarik
`Jacob LaCombe
`MUNCK WILSON MANDALA, LLP
`dvenglarik@munckwilson.com
`jlacombe@munckwilson.com
`
`PATENT OWNER:
`
`Wayne Helge
`James Wilson
`Aldo Noto
`DAVIDSON BERQUIST JACKSON & GOWDEY, LLP
`whelge@dbjg.com
`jwilson@dbjg.com
`anoto@dbjg.com
`
`4
`
`
`
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