`Trials@uspto.gov
`571-272-7822
`
` Date: November 9, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KINGSTON TECHNOLOGY COMPANY, INC.,
`Petitioner,
`
`v.
`
`SPEX TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`IPR2017-01021
`Patent 6,003,135
`____________
`
`Before LYNNE E. PETTIGREW, CHARLES J. BOUDREAU, and
`NORMAN H. BEAMER, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`TERMINATION
`Due to Settlement on Remand
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`
`
`
`
`IPR2017-01021
`Patent 6,003,135
`This case is before us on remand from the U.S. Court of Appeals for
`the Federal Circuit. Kingston Tech. Co. v. SPEX Techs., Inc., 798 F. Appx.
`629 (Fed. Cir. 2020). On November 5, 2020, with our authorization, the
`parties filed a “Joint Motion to Terminate Pursuant to 35 U.S.C. § 317 and
`Joint Request to Keep Separate Pursuant to [35] U.S.C. § 317(b) and
`37 C.F.R. § 42.74.” Paper 45 (“Motion”). The parties represent in the
`Motion that they “have settled with respect to [U.S. Patent No. 6,003,135
`(“the ’135 patent”)] and have reached agreement to terminate this IPR,” that
`“[t]he settlement agreement between the parties has been made in writing,”
`that “a true and correct copy of the settlement agreement . . . will be filed
`with this request as Exhibit 3001,” and that “[t]he parties have filed a copy
`of the settlement agreement with the Board, as required by 35 U.S.C.
`§ 317(b) and 37 C.F.R. § 42.74.” Motion 1, 3, 4.1 Indeed, a copy of the
`parties’ settlement agreement, labeled as “Exhibit 3001,” was filed along
`with the Motion as Exhibit 2005 in the record of this case.
`The parties have not identified any other proceedings currently
`pending before the Office involving challenges to the subject ’135 patent,
`and the parties further indicate in the Motion that “[n]o other party’s rights
`will be prejudiced by the termination of this inter partes review” and that
`“[t]he District court in the action of SPEX Technologies, Inc. v. Kingston
`Technology Corporation, et al., Case No. 8:16-cv-1790 . . . pending in the
`Central District of California has dismissed the claims that relate to the
`’135 patent.” Motion 3.
`
`
`1 The Motion does not include page numbers. We reference page numbers
`with page 1 being the first page after the title page.
`
`2
`
`
`
`IPR2017-01021
`Patent 6,003,135
`Under the present circumstances, we determine that it is appropriate to
`terminate this proceeding without rendering a final written decision on
`remand pursuant to 35 U.S.C. § 318(a). See 35 U.S.C. § 317; 37 C.F.R.
`§§ 42.72, 42.74. We also grant the parties’ request to treat the settlement
`agreement as business confidential information to be kept separate from the
`files of this proceeding and the files of the ’135 patent. Motion 3.
`
`
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Joint Motion to Terminate Pursuant to 35 U.S.C.
`§ 317 and Joint Request to Keep Separate Pursuant to [35] U.S.C. § 317(b)
`and 37 C.F.R. § 42.74 is granted;
`FURTHER ORDERED that this proceeding is accordingly terminated
`as to all parties; and
`FURTHER ORDERED that Exhibit 2005 is accordingly to be kept
`separate from the file of the involved U.S. Patent No. 6,003,135 under the
`provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`
`
`
`3
`
`
`
`IPR2017-01021
`Patent 6,003,135
`For PETITIONER:
`
`David Hoffman
`FISH & RICHARDSON P.C.
`hoffman@fr.com
`
`Martha Hopkins
`LAW OFFICES OF S. J. CHRISTINE YANG
`mhopkins@sjclawpc.com
`
`
`For PATENT OWNER:
`
`Philip X. Wang
`Kent Shum
`RUSS AUGUST & KABAT
`pwang@raklaw.com
`kshum@raklaw.com
`
`
`
`4
`
`
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