Trials@uspto.gov
`571.272.7822
`
`Paper No. 21
`
` Filed: April 27, 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
`____________
`
`Before KARL D. EASTHOM, DAVID C. MCKONE, KERRY BEGLEY,
`and JOHN A. HUDALLA, Administrative Patent Judges.1
`
`PER CURIAM.
`
`JUDGMENT
`Termination of the Proceeding
`35 U.S.C. § 317; 37 C.F.R. §§ 42.72, 42.74
`
`
`
`1 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.
`
`
`571.272.7822
`
`Paper No. 21
`
` Filed: April 27, 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
`____________
`
`Before KARL D. EASTHOM, DAVID C. MCKONE, KERRY BEGLEY,
`and JOHN A. HUDALLA, Administrative Patent Judges.1
`
`PER CURIAM.
`
`JUDGMENT
`Termination of the Proceeding
`35 U.S.C. § 317; 37 C.F.R. §§ 42.72, 42.74
`
`
`
`1 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 25, 2017, the parties filed, in each of the instant proceedings,
`a joint motion to terminate the proceeding pursuant to 35 U.S.C. § 317 and
`37 C.F.R. §§ 42.72 and 42.74. Paper 19. The parties submit that
`termination is appropriate because they have settled and “fully resolve[d]”
`their dispute regarding the patent-at-issue in each proceeding. Id. at 2–3, 6.
`Along with the motion, the parties filed in the record of each
`proceeding what they represent to be a “true and complete” copy of their
`settlement agreement, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(b). Id. at 2; see IPR2016-01810, Ex. 2003; IPR2016-01818,
`Ex. 2002; IPR2016-01819, Ex. 2002. In addition, the parties filed a joint
`request to have the settlement agreement treated as business confidential
`information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 20.
`For the reasons given below, we grant the joint motion to terminate and the
`joint request to treat the settlement agreement as business confidential
`information in each of the instant proceedings.
`Under 35 U.S.C. § 317(a), 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). Since institution of each of the instant inter partes review
`proceedings, Patent Owner has not filed a Response, Petitioner has not filed
`a Reply, and no oral hearing has been held. As a result, the Board has not
`yet decided the merits of any of the proceedings. Moreover, we determine
`that terminating each proceeding promotes efficiency and minimizes
`unnecessary costs. Upon consideration of the facts before us, we determine
`
`
`
`2
`
`
`
`IPR2016-01810 (Patent 6,307,629 B1)
`IPR2016-01818 (Patent 7,113,283 B2)
`IPR2016-01819 (Patent 6,915,955 B2)
`
`that it is appropriate to terminate each proceeding and enter judgment
`without rendering a final written decision. See 35 U.S.C. § 317(a);
`37 C.F.R. § 42.72.
`In addition, 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b) require that
`“[a]ny agreement or understanding” between the parties “made in
`connection with, or in contemplation of, the termination of” an inter partes
`review proceeding “shall be in writing and a true copy” “shall be filed” with
`the Board “before the termination” of the proceeding. 35 U.S.C. § 315(b);
`37 C.F.R. § 42.74(b). The agreement or understanding filed with the Board
`must include “any collateral agreements referred to in such agreement or
`understanding.” 35 U.S.C. § 315(b). We denied without prejudice an
`earlier-filed joint motion to terminate each of the instant proceedings based
`on a failure to comply with these requirements, because the version of the
`settlement agreement previously filed with the Board was incomplete, with
`portions of Exhibits G and H omitted. Paper 18. The version of the
`agreement filed with the present motion to terminate in each proceeding,
`however, appears to include the entirety of these exhibits. See IPR2016-
`01810, Ex. 2003; IPR2016-01818, Ex. 2002; IPR2016-01819, Ex. 2002.
`Based on our review of the filed settlement agreement and the parties’
`certification that there are no other agreements or understandings between
`them, we determine that the parties have complied with the requirements of
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b). See Paper 19, 2.
`Turning to the joint request to file the settlement agreement as
`business confidential information, we determine that the parties have
`complied with the requirements of 37 C.F.R. § 42.74(c) to have their
`
`
`
`3
`
`
`
`IPR2016-01810 (Patent 6,307,629 B1)
`IPR2016-01818 (Patent 7,113,283 B2)
`IPR2016-01819 (Patent 6,915,955 B2)
`
`settlement agreement treated as business confidential information that is kept
`separate from the files of the patent-at-issue in each proceeding.
`Accordingly, the agreement shall be made available only to a Government
`agency on written request to the Board or to any other person upon a
`showing of good cause and compliance with the other requirements of
`37 C.F.R. § 42.74(c)(2).
`
`ORDER
`For the foregoing reasons, it is:
`ORDERED that the Joint Motion to Terminate (Paper 19), in each of
`the above-captioned proceedings, is granted;
`FURTHER ORDERED that the Joint Request to File Settlement
`Agreement as Business Confidential Information and to Maintain Said
`Agreement Separate from the Public File (Paper 20), in each of the
`above-captioned proceedings, is granted;
`FURTHER ORDERED that the record copies of parties’ settlement
`agreement (IPR2016-01810, Ex. 2003; IPR2016-01818, Ex. 2002;
`IPR2016-01819, Ex. 2002) shall continue to be designated as “Board Only”
`in the Patent Trial and Appeal Board End to End (PTAB E2E) system;
`FURTHER ORDERED that the parties’ settlement agreement shall be
`made available only to a Government agency on written request to the Board
`or to any other person upon a showing of good cause and compliance with
`the other requirements of 37 C.F.R. § 42.74(c)(2); and
`FURTHER ORDERED that each of IPR2016-01810, IPR2016-01818,
`and IPR2016-01819 is terminated pursuant to 35 U.S.C. § 317.
`
`
`
`
`4
`
`
`
`IPR2016-01810 (Patent 6,307,629 B1)
`IPR2016-01818 (Patent 7,113,283 B2)
`IPR2016-01819 (Patent 6,915,955 B2)
`
`PETITIONER:
`Daniel E. Venglarik
`Jacob L. LaCombe
`Tiffany M. Cooke
`Jamil N. Alibhai
`Kelly P. Chen
`MUNCK WILSON MANDALA, LLP
`511-AMS@munckwilson.com
`dvenglarik@munckwilson.com
`jlacombe@munckwilson.com
`
`PATENT OWNER:
`
`Wayne M. Helge
`James T. Wilson
`Aldo Noto
`DAVIDSON BERQUIST JACKSON & GOWDEY, LLP
`whelge@dbjg.com
`jwilson@dbjg.com
`anoto@dbjg.com
`
`
`
`
`5
`
`
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