`571.272.7822
`
`
` Paper No. 14
`
`Filed: May 30, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TOKYO ELECTRON LIMITED,
`Petitioner,
`
`v.
`
`DANIEL L. FLAMM,
`Patent Owner.
`
`Case IPR2017-01072
`Patent RE40,264 E
`____________
`
`
`
`Before CHRISTOPHER L. CRUMBLEY, JO-ANNE M. KOKOWSKI, and
`KIMBERLY McGRAW, Administrative Patent Judges.
`
`McGRAW, Administrative Patent Judge.
`
`
`
`
`DECISION
`Joint Motion to Terminate
`37 C.F.R. §§ 42.72, 42.74
`
`
`
`IPR2017-01072
`Patent RE40,264 E
`
`
`On May 25, 2018, Toyko Electron Limited (“Petitioner”) and Daniel
`L. Flamm (“Patent Owner”) filed a “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).”1 Paper 13 (“Motion” or “Mot.”). The parties state that they
`have entered into a “confidential settlement agreement (Confidential binding
`Memorandum of Understanding Daniel L. Flamm and Tokyo Electron
`Limited (the ‘MOU’))” that resolves their dispute over U.S. Patent
`No. RE40,264 (“the ’264 patent”). Mot. 1, 3. A copy of the MOU was
`submitted as required by 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74.
`Ex. 1022.
`The parties request that the MOU be treated as business confidential
`information and be kept separate from the underlying files of the challenged
`patents, as provided in 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (“A
`party to a settlement may request that the settlement be treated as business
`confidential information and be kept separate from the files of an involved
`patent or application.”). Mot. 3.
`We declined to institute inter partes review of the challenged claims.
`Paper 7. Petitioner filed a Request for Rehearing (Paper 11), a decision on
`which has not yet issued. No other motions are pending. Based on the facts
`of this case, it is appropriate to terminate the proceedings with respect to
`
`
`1 Although the parties did not receive authorization to file this motion as
`required by 37 C.F.R. § 42.20(b), on the particular facts of this case, we
`waive that requirement pursuant to our authority under 37 C.F.R. § 42.5(b).
`2
`
`
`
`IPR2017-01072
`Patent RE40,264 E
`
`both parties without rendering a decision on the motion for rehearing. See
`35 U.S.C. § 317(a); 37 C.F.R §§ 42.72, 42.74. Therefore, the joint motion to
`terminate the proceeding is granted, and the Request for Rehearing is moot.
`This paper does not constitute a final written decision pursuant to 35 U.S.C.
`§ 318(a).
`Accordingly, it is
`ORDERED that the joint motion to terminate the proceeding is
`GRANTED and the proceeding is terminated with respect to both the
`Petitioner and the Patent Owner;
`FURTHER ORDERED that Petitioner’s Request for Rehearing is
`moot; and
`FURTHER ORDERED that the confidential settlement agreement
`shall be treated as business confidential information under 35 U.S.C.
`§ 317(b) and 37 C.F.R. § 42.74(c) and shall be kept separate from the file of
`the patent.
`
`
`
`
`
`
`3
`
`
`
`IPR2017-01072
`Patent RE40,264 E
`
`For PETITIONER:
`
`Steven P. Weihrouch
`sweihrouch@rfem.com
`
`Soumya P. Panda
`spanda@rfem.com
`
`
`For PATENT OWNER:
`
`Christopher Frerking
`chris@ntknet.com
`
`4
`
`
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