Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 14
`Entered: December 19, 2018
`
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`AND SAMSUNG SEMICONDUCTOR, INC.,
`Petitioner,
`v.
`TESSERA ADVANCED TECHNOLOGIES, INC.,
`Patent Owner.
`
`
`
`
`
`Cases IPR2018-00798 and IPR2018-00799
`Patent 6,954,001 B21
`
`
`Before BARBARA A. PARVIS, ROBERT J. WEINSCHENK, AND
`SCOTT B. HOWARD, Administrative Patent Judges.
`HOWARD, Administrative Patent Judge.
`
`
`DECISION
`Granting Joint Motions to Terminate Proceeding Due to
`Settlement after Institution Decision and
`Granting Joint Requests to File Settlement Agreement as
`Business Confidential Information
`35 U.S.C. § 317; 37 C.F.R. §§ 42.72, 42.74
`
`
`1 This Order addresses issues pertaining to the above-identified proceedings.
`We exercise our discretion to issue one Order to be filed in each case. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`Tel: 571-272-7822
`
`Paper 14
`Entered: December 19, 2018
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`AND SAMSUNG SEMICONDUCTOR, INC.,
`Petitioner,
`v.
`TESSERA ADVANCED TECHNOLOGIES, INC.,
`Patent Owner.
`
`
`
`
`
`Cases IPR2018-00798 and IPR2018-00799
`Patent 6,954,001 B21
`
`
`Before BARBARA A. PARVIS, ROBERT J. WEINSCHENK, AND
`SCOTT B. HOWARD, Administrative Patent Judges.
`HOWARD, Administrative Patent Judge.
`
`
`DECISION
`Granting Joint Motions to Terminate Proceeding Due to
`Settlement after Institution Decision and
`Granting Joint Requests to File Settlement Agreement as
`Business Confidential Information
`35 U.S.C. § 317; 37 C.F.R. §§ 42.72, 42.74
`
`
`1 This Order addresses issues pertaining to the above-identified proceedings.
`We exercise our discretion to issue one Order to be filed in each case. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`
`Cases IPR2018-00798 and IPR2018-00799
`Patent 6,954,001 B2
`
`
`Per our authorization provided on December 11, 2018, the parties
`filed a Joint Motion to Terminate Proceeding in each of the above-identified
`inter partes review proceedings due to settlement. Paper 12.2 Pursuant to
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), the parties also filed copies of
`their written Settlement Agreement (Ex. 1021) and associated Consent Letter
`(Ex. 1022).
`In the Joint Motion to Terminate, the parties represent that they “have
`settled their dispute, and respectfully submit that termination is proper here.”
`Paper 12, 1. The parties represent that they have “executed a Confidential
`Settlement Agreement to terminate this proceeding effective December 7,
`2018” and that “[t]rue and correct copies of the Settlement Agreement and
`Consent Letter are submitted . . . as Confidential Exhibits 1021 and 1022.”
`Id. at 2–3. The parties further represent that, besides these inter partes
`review proceedings, “[U.S. Patent No. 6,954,001] was the subject of three
`separate matters” which have been either “terminated” or “the parties [have]
`stipulated to dismiss with prejudice.” Id. 1–2.
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
`this chapter shall be terminated with respect to any petitioner upon the joint
`request of the petitioner and patent owner, unless the Office has decided the
`merits of the proceeding before the request for termination is filed.”
`Although a Decision to Institute was entered on October 1, 2018 (Paper 8),
`we have not entered a Final Written Decision on the merits.
`Under these circumstances, we determine that good cause exists to
`terminate the proceedings with respect to the parties. Indeed, there are
`
`2 We cite to the record in IPR2018-00798. Similar documents were filed in
`IPR2018-00799.
`
`2
`
`
`
`Cases IPR2018-00798 and IPR2018-00799
`Patent 6,954,001 B2
`
`strong public policy reasons to favor settlement between the parties to a
`proceeding. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768
`(Aug. 14, 2012). The trial is at an early stage. Patent Owner has not yet
`submitted its Patent Owner Response, the hearing is scheduled for July 1,
`2019, and we have not yet entered a final written decision. See id.
`Accordingly, we determine that it is appropriate to terminate trial without
`entering a Final Written Decision. See 37 C.F.R. § 42.72.
`The parties also filed a Joint Request to File Settlement Agreement
`and Consent Letter as Business Confidential Information in each of the
`above-identified proceedings. Paper 13. The parties requested that the
`Settlement Agreement (Ex. 1021) and Consent Letter (Ex. 1022) be filed as
`business confidential information, and that the Settlement Agreement and
`Consent Letter be kept separate from the file of the patent involved in the
`inter partes review and not be made available to any third party, except as
`provided for in 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 13, 1;
`see also Paper 12, 2–3.
`Our rules provide as follows:
`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. The
`request must be filed with the settlement. If a timely request is
`filed, the settlement shall only be available: (1) To a
`Government agency on written request to the Board; or (2) To
`any other person upon written request to the Board to make the
`settlement agreement available, along with the fee specified in
`§ 42.15(d) and on a showing of good cause.
`37 C.F.R. § 42.74(c).
`After reviewing the Settlement Agreement and Consent Letter
`between Petitioner and Patent Owner, we find that the Settlement Agreement
`
`3
`
`
`
`Cases IPR2018-00798 and IPR2018-00799
`Patent 6,954,001 B2
`
`and Consent Letter contain confidential business information regarding the
`terms of settlement. We determine that it is appropriate to treat the
`Settlement Agreement and Consent Letter between Petitioner and Patent
`Owner as business confidential information pursuant to 37 C.F.R. § 42.74(c).
`This Order does not constitute a final written decision pursuant to 35
`U.S.C. § 318(a).
`
`II. ORDER
`
`In consideration of the foregoing, it is hereby:
`ORDERED that the Joint Motions to Terminate Proceeding, as to both
`Petitioner and Patent Owner, are GRANTED, and IPR2018-00798 and
`IPR2018-00799 are hereby terminated; and
`FURTHER ORDERED that the parties’ Joint Requests to File
`Settlement Agreement and Consent Letter as Business Confidential
`Information are GRANTED, and the Settlement Agreement (Ex. 1021) and
`associated Consent Letter (Ex. 1022) shall be kept separate from the file of
`Patent 6,954,001 B2 and made available only to Federal Government
`agencies on written request, or to any person on a showing of good cause,
`pursuant to 37 C.F.R. § 42.74(c).
`
`
`
`
`
`
`
`
`4
`
`
`
`Cases IPR2018-00798 and IPR2018-00799
`Patent 6,954,001 B2
`
`PETITIONER:
`Kappos John
`jkappos@omm.com
`
`Brian Berliner
`bberliner@omm.com
`
`Ryan Yagura
`ryagura@omm.com
`
`Nicholas Whilt
`nwhilt@omm.com
`
`Xin-Yi Zhou
`vzhou@omm.com
`
`PATENT OWNER:
`
`Matthew Moore
`matthew.moore@lw.com
`
`Bob Steinberg
`bob.steinberg@lw.com
`
`Charles Sanders
`charles.sanders@lw.com
`
`Jon Strang
`jonathan.strang@lw.com
`
`
`5
`
`
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