Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 26
`Entered: February 26, 2019
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NIKON CORPORATION,
`Petitioner,
`
`v.
`
`ASML NETHERLANDS B.V.
`CARL ZEISS AG,
`Patent Owner.
`____________
`
`Case IPR2018-00687, Patent 6,731,335 B1;
` Case IPR2018-00688, Patent 6,463,163 B1
`____________
`
`
`Before JEFFREY S. SMITH, DAVID C. MCKONE, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`DECISION
`Motion to Terminate
`37 C.F.R. § 42.74
`
`
`Tel: 571-272-7822
`
`Paper 26
`Entered: February 26, 2019
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NIKON CORPORATION,
`Petitioner,
`
`v.
`
`ASML NETHERLANDS B.V.
`CARL ZEISS AG,
`Patent Owner.
`____________
`
`Case IPR2018-00687, Patent 6,731,335 B1;
` Case IPR2018-00688, Patent 6,463,163 B1
`____________
`
`
`Before JEFFREY S. SMITH, DAVID C. MCKONE, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`DECISION
`Motion to Terminate
`37 C.F.R. § 42.74
`
`
`
`IPR2018-00687, Patent 6,731,335 B1;
`IPR2018-00688, Patent 6,463,163 B1
`
`
`On February 22, 2019, Petitioner Nikon Corporation and Patent
`Owner ASML Netherlands B.V. and Carl Zeiss AG, filed a Joint Motion to
`Terminate Proceeding in each of the above-captioned proceedings
`(Paper 231) and a Joint Request that Settlement Agreement and
`Memorandum of Understanding Filed as Exhibit 1011 Be Treated as
`Business Confidential Information and Kept Separate From the Files
`(Paper 24). The parties represent that they have reached a Settlement
`Agreement, which is in writing and a true copy of which has been filed in
`conjunction with the above motions as required under 37 C.F.R. § 42.74(b).
`Paper 23, 1; Ex. 1011. The parties state that they also have agreed to
`dismiss the related District Court litigation and other pending proceedings
`between them. Paper 23, 1.
`“An inter partes review instituted under this chapter 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). We have not yet decided the merits of these proceedings.
`Accordingly, pursuant to Section 317(a), we grant the Motions to Terminate
`as to Petitioner. “If no petitioner remains in the inter partes review, the
`Office may terminate the review or proceed to a final written decision under
`section 318(a).” Id. Because the parties have settled this proceeding and the
`other matters between them, and because we have not yet decided the merits
`of these proceedings, we also grant the Motions to Terminate as to Patent
`
`1 Unless otherwise specified, we refer to the paper and exhibit numbering in
`IPR2018-00687. Similar filings were made in both of the above-captioned
`cases.
`
`2
`
`
`
`IPR2018-00687, Patent 6,731,335 B1;
`IPR2018-00688, Patent 6,463,163 B1
`
`Owner. We determine that terminating each proceeding promotes efficiency
`and minimizes unnecessary costs. Upon consideration of the facts before us,
`we determine 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). The parties certify that no other
`agreements exist between the parties concerning these cases or the patents at
`issue. Paper 23, 1. 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).
`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
`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
`
`3
`
`
`
`IPR2018-00687, Patent 6,731,335 B1;
`IPR2018-00688, Patent 6,463,163 B1
`
`showing of good cause and compliance with the other requirements of 37
`C.F.R. § 42.74(c)(2).
`
`
`ORDER
`
`It is
`
`ORDERED that the Joint Motion to Terminate Proceeding (IPR2018-
`00687, Paper 23; IPR2018-00688, Paper 24), in each of the above-captioned
`proceedings, is granted;
`FURTHER ORDERED that the Joint Request that Settlement
`Agreement and Memorandum of Understanding Filed as IPR2018-00687,
`Exhibit 1011, and IPR2018-00687, Exhibit 1018, be Treated as Business
`Confidential Information and Kept Separate From the Files (IPR2018-
`00687, Paper 24; IPR2018-00688, Paper 25), in each of the above-captioned
`proceedings, is granted;
`FURTHER ORDERED that the record copies of the parties’
`settlement agreement (IPR2018-00687, Ex. 1011; IPR2018-00688,
`Ex. 1018) 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 IPR2018-00687 and IPR2018-
`00688 is terminated pursuant to 35 U.S.C. § 317.
`
`
`
`
`4
`
`
`
`IPR2018-00687, Patent 6,731,335 B1;
`IPR2018-00688, Patent 6,463,163 B1
`
`PETITIONER:
`David L. Fehrman
`David T. Yang
`Hector Gallegos
`MORRISON & FOERSTER LLP
`dferman@mofo.com
`dyang@mofo.com
`hgallegos@mofo.com
`
`PATENT OWNER:
`Kurt Glizenstein
`John Phillips
`Christopher Marchese
`Kim Leung
`Markus Weyde
`Proshanto Mukherji
`FISH & RICHARDSON P.C.
`glitzenstein@fr.com
`phillips@fr.com
`marchese@fr.com
`leung@fr.com
`weyde@fr.com
`mukherji@fr.com
`
`
`
`
`
`
`
`5
`
`
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