Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 38
`Entered: August 20, 2019
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`KOKUSAI ELECTRIC CORPORATION,
`Petitioner,
`
`v.
`
`ASM IP HOLDING B.V.,
`Patent Owner.
`_______________
`
`Case IPR2018-01151
`Patent 7,537,662 B2
`
`_______________
`
`
`Before MICHAEL P. TIERNEY, Vice Chief Administrative Patent Judge,
`DONNA M. PRAISS and CHRISTOPER L. CRUMBLEY, Administrative
`Patent Judges.
`
`
`PRAISS, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Termination of the Proceedings
`35 U.S.C. § 317(a)
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 38
`Entered: August 20, 2019
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`KOKUSAI ELECTRIC CORPORATION,
`Petitioner,
`
`v.
`
`ASM IP HOLDING B.V.,
`Patent Owner.
`_______________
`
`Case IPR2018-01151
`Patent 7,537,662 B2
`
`_______________
`
`
`Before MICHAEL P. TIERNEY, Vice Chief Administrative Patent Judge,
`DONNA M. PRAISS and CHRISTOPER L. CRUMBLEY, Administrative
`Patent Judges.
`
`
`PRAISS, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Termination of the Proceedings
`35 U.S.C. § 317(a)
`
`
`
`
`
`IPR2018-01151
`Patent 7,537,662 B2
`
`
`On July 12, 2019, the parties filed a Joint Motion to Terminate
`
`pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74. Paper 37. With the
`
`motion to terminate, the parties filed a copy of a written settlement
`
`agreement (Ex. 2012) along with a Joint Request to File Settlement
`
`Agreement as Business Confidential Information and to Keep it Separate
`
`from the Patent Files pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74
`
`(Paper 36). We authorized the filing of these papers in an e-mail dated July
`
`10, 2019.
`
`The parties’ Joint Motion to Terminate this proceeding additionally
`
`requests that the Board “grant-in-part the pending unopposed Motion to
`
`Amend (Paper 17).” Paper 37, 1. The Joint Motion to Terminate clarifies
`
`that Petitioner filed an Opposition to the Motion to Amend (Paper 26), but
`
`agreed to withdraw its opposition to the Motion to Amend as part of the
`
`terms of the Settlement Agreement (Ex. 2012, Section 3.1 (c)). Paper 37, 3.
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`With that explanation, the parties characterize the pending Motion to Amend
`
`as “now unopposed” and request the Board to grant-in-part the Motion to
`
`Amend by granting the portion of the Motion to Amend that requests
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`replacement of canceled claims 1, 3, 4, 9, 11, 12, 18, 20, 24–27 with
`
`proposed substitute claims 44, 47, 49–50, 53, 55–56, and 58–62. Id.;
`
`Paper 17, 1.
`
`The panel held a conference with the parties’ counsel on July 29,
`
`2019, to discuss the basis for and implications of the parties’ request that we
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`“grant-in-part the Motion to Amend.” During the conference, counsel
`
`asserted that the Board has authority to decide a motion to amend before
`
`terminating a proceeding pursuant to 37 C.F.R. §§ 42.71(a) and 42.72 and
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`35 U.S.C. § 317(a). Counsel also asserted that Title 35 envisions that the
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` 2
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`IPR2018-01151
`Patent 7,537,662 B2
`
`
`Board may permit, and then decide, an additional motion to amend to
`
`“materially advance the settlement of a proceeding” pursuant to
`
`35 U.S.C. § 316(d)(2). During the conference, counsel confirmed that
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`(1) the parties’ Settlement Agreement is not contingent on the Motion to
`
`Amend being decided, (2) the parties’ joint request to terminate the
`
`proceeding is not contingent on the Motion to Amend being decided, and
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`(3) termination of the proceeding without a final written decision is sought
`
`by the parties. The only reason identified by the parties for seeking a partial
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`decision on the pending Motion to Amend to add the proposed substitute
`
`claims to Patent No. 7,537,662 B2, rather than pursuing those claims in a
`
`reissue application or request for reexamination, was efficiency in terms of
`
`the proposed claims having been presented in the Motion to Amend filed in
`
`this proceeding.
`
`Generally, the Board expects that a proceeding will terminate after the
`
`filing of a settlement agreement. See, e.g., Office Patent Trial Practice
`
`Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). We instituted trial in
`
`this proceeding on December 3, 2018. Paper 9. Although briefing by the
`
`parties has been completed, the scheduled oral hearing is not until August
`
`27, 2019 (Paper 10, 7) and a decision on the merits has not been reached.
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`The parties represent that Exhibit 2012 is a “true copy” of their settlement
`
`agreement and that the agreement resolves the dispute in this and all other
`
`inter partes reviews between Petitioner and Patent Owner, as well as the
`
`related district court litigations between Petitioner and Patent Owner.
`
`Paper 37, 1. They also represent that “[t]here are no other agreements, oral
`
`or written, between the parties made in connection with, or in contemplation
`
`of, the termination of this proceeding.” Id. at 1–2.
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` 3
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`IPR2018-01151
`Patent 7,537,662 B2
`
`
`Given the parties’ joint request, we must terminate the proceeding
`
`with respect to Petitioner unless we have decided the merits of the
`
`proceeding. See 35 U.S.C. § 317(a) (“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.”). In
`
`addition, “[i]f no petitioner remains in the inter partes review, the Office
`
`may terminate the review or proceed to a final written decision.” Id. Based
`
`on the facts of this case, we determine that it is appropriate to terminate this
`
`proceeding without rendering a final written decision or a decision on the
`
`Motion to Amend. Our reasoning is set forth below.
`
`Although the Motion to Amend has been fully briefed (Papers 17, 26,
`
`32), the parties contend that we may simply enter the amended claims
`
`because Petitioner has withdrawn its opposition (Paper 37, 3). A decision on
`
`Patent Owner’s Motion to Amend, however, requires a determination as to
`
`the patentability of the substitute claims. 35 U.S.C. § 318(a) (“If an inter
`
`partes review is instituted and not dismissed under this chapter, the Patent
`
`Trial and Appeal Board shall issue a final written decision with respect to
`
`the patentability of any patent claim challenged by the petitioner and any
`
`new claim added under section 316(d)”); 37 C.F.R. § 42.121 (“A motion to
`
`amend may be denied where: (i) The amendment does not respond to a
`
`ground of unpatentability involved in the trial”).
`
`Therefore, the fact that Petitioner has withdrawn its opposition as a
`
`consequence of the settlement of this proceeding does not remove the issue
`
`of patentability of the “non-contingent” substitute claims in deciding Patent
`
`Owner’s Motion to Amend. In addition, the parties confirmed during the
`
` 4
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`IPR2018-01151
`Patent 7,537,662 B2
`
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`conference call with the Board that they do not seek a decision on the
`
`Motion to Amend if the proposed substitute claims are determined to be
`
`unpatentable. Proceeding with an analysis of the patentability of the
`
`proposed substitute claims in this situation would not be an efficient use of
`
`resources.
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`Additionally, the Director is to issue a certificate where the Board
`
`issues a final written decision and the time for appeal has expired or
`
`terminated. 35 U.S.C. § 318(b). During the conference call, the parties did
`
`not identify an explicit statutory basis for issuing a certificate absent a final
`
`written decision. In response to questions from the Board, the parties
`
`requested that the Board not issue a final written decision. Specifically, the
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`parties stated that they would rather the Board terminate the proceeding than
`
`decide the motion to amend as part of a final written decision.
`
`This uncertainty regarding the Office’s ability to issue amended
`
`claims in the absence of a final written decision and trial certificate under 35
`
`U.S.C. § 318 contrasts with the Office’s clear authority to do so through
`
`reexamination or reissue proceedings. In this regard, we direct Patent
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`Owner’s attention to the April 2019 Notice Regarding Options for
`
`Amendments by Patent Owner Through Reissue or Reexamination During a
`
`Pending AIA Trial Proceeding. 77 Fed. Reg. 16655 (Apr. 22, 2019) (“The
`
`Office will consider a reissue application or a request for reexamination any
`
`time before, but not after, either: (1) The Office issues a certificate that
`
`cancels all claims of a patent, e.g., a trial certificate in an AIA trial
`
`proceeding, or (2) the U.S. Court of Appeals for the Federal Circuit
`
`(‘‘Federal Circuit’’) issues a mandate in relation to a decision that finds all
`
`claims of a patent are invalid or unpatentable.”).
`
` 5
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`IPR2018-01151
`Patent 7,537,662 B2
`
`
`In light of the foregoing, the Joint Motion to Terminate is granted to
`
`the extent that this proceeding is terminated without reaching a decision on
`
`the Motion to Amend. This decision to terminate does not restrict Patent
`
`Owner from filing a reissue application or a request for reexamination to
`
`amend the claims of Patent No. 7,537,662 B2, if the application is otherwise
`
`permitted. The Joint Request to treat the settlement agreement as business
`
`confidential information is granted.
`
`This Order does not constitute a final written decision pursuant to
`
`35 U.S.C. § 318(a).
`
`Accordingly, it is
`
`ORDER
`
`ORDERED that the Joint Request that the settlement agreement be
`
`treated as business confidential information and be kept separate from the
`
`files of the above-identified proceedings and from the files of the involved
`
`patents under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c),
`
`is granted;
`
`FURTHER ORDERED that the Joint Motion to Terminate the above-
`
`identified proceeding is granted to the extent that the proceeding is
`
`terminated without reaching a decision on the Motion to Amend; and
`
`FURTHER ORDERED that this proceeding is terminated with respect
`
`to both Petitioner and Patent Owner pursuant to 35 U.S.C. § 317(a)
`
`and 37 C.F.R. § 42.72.
`
`
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` 6
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`IPR2018-01151
`Patent 7,537,662 B2
`
`
`
`FOR PETITIONER:
`
`Dion M. Bregman
`Michael J. Lyons
`Jason E. Gettleman
`Alexander Stein
`MORGAN, LEWIS & BOCKIUS LLP
`Dion.bregman@morganlewis.com
`Michael.lyons@morganlewis.com
`Jason.gettleman@morganlewis.com
`Alexander.stein@morganlewis.com
`
`
`FOR PATENT OWNER:
`
`Kerry S. Taylor
`Adeel S. Akhtar
`Nathanael R. Luman
`Carol Pitzel Cruz
`Nathan D. Reeves
`Bridget Smith
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2kst@knobbe.com
`2asa@knobble.com
`2nrl@knobbe.com
`2nrl@knobbe.com
`2cmp@knobbe.com
`2bzs@knobbe.com
`
`
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` 7
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