Entered: December 13, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
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`SAMSUNG ELECTRONICS CO., LTD., AND SAMSUNG ELECTRONICS
`AMERICA, INC.,
`Petitioner,
`v.
`INVENSAS CORPORATION,
`Patent Owner.
`_______________________
`Case IPR2018-01265
`U.S. Patent No. 6,054,336
`_______________________
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`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.74
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
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`SAMSUNG ELECTRONICS CO., LTD., AND SAMSUNG ELECTRONICS
`AMERICA, INC.,
`Petitioner,
`v.
`INVENSAS CORPORATION,
`Patent Owner.
`_______________________
`Case IPR2018-01265
`U.S. Patent No. 6,054,336
`_______________________
`
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`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.74
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`IPR2018-01265 (USP 6,054,336)
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`Joint Motion to Terminate
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`Pursuant to 35 U.S.C. § 317(a), 37 C.F.R. § 42.74, and the Board’s December
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`12, 2018 correspondence, Petitioner Samsung Electronics Co., Ltd. and Samsung
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`Electronics America, Inc. (“Petitioner”) and Patent Owner Invensas Corporation
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`(“Patent Owner”) (collectively, “the Parties”) jointly request termination of the inter
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`partes review of U.S. Patent No. 6,054,336 (“’336 patent”), Case No. IPR2018-
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`01265.
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`Pursuant to 37 C.F.R. §§ 42.5 and 42.72, the Board may terminate a trial
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`without rendering a final written decision, where appropriate, including pursuant to
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`a joint request under 35 U.S.C. §§ 317(a) or 327(a). See Winplus N. Am., Inc. v.
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`Pilot, Inc., IPR2018-00488, Paper 12 (P.T.A.B. Oct. 24, 2018).
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`This proceeding is still in its preliminary stages. A Petition for inter partes
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`review was filed on June 15, 2018 (Paper No. 1), and the Board has not yet issued a
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`decision on institution. The Parties have settled their dispute and respectfully submit
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`that termination is proper here.
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`The ’336 patent was the subject of a District Court action in the Eastern
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`District of Texas, Civil Action No. 2:17-cv-00670-RWS-RSP, entitled Invensas
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`Corporation v. Samsung Electronics Co., Ltd. et al., which the parties stipulated to
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`dismiss with prejudice. A dismissal of the Petition here would promote efficiency
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`and minimize unnecessary costs.
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`1
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`IPR2018-01265 (USP 6,054,336)
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`Joint Motion to Terminate
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`Samsung and Patent Owner’s parent Xperi Corporation executed a
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`Confidential Settlement Agreement to terminate this proceeding effective December
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`7, 2018. This agreement was made binding on Patent Owner Invensas Corporation
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`by Consent Letter of the same date. Both the Settlement Agreement and a Consent
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`Letter are submitted concurrently herewith. In accordance with 35 U.S.C. § 317 and
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`37 C.F.R. § 42.74(b), also submitted concurrently herewith is a Joint Request that
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`the Confidential Settlement Agreement and Consent Letter be treated as business
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`confidential information, be kept separate from the file of the involved patent, and
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`be made available only to the Federal Government agencies on written request, or to
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`any person on showing of good cause under 35 U.S.C. § 317 and 37 C.F.R.
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`§ 42.74(c). True and correct copies of the Settlement Agreement and Consent Letter
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`are submitted with that Request as Confidential Exhibits 1012 and 1013.
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`Petitioner and Patent Owner certify that there are no other agreements, oral or
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`written, between the parties made in connection with, or in contemplation of, the
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`termination of the proceeding. Both Petitioner and Patent Owner support
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`termination of the proceeding.
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`CONCLUSION
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`For the foregoing reasons, Petitioner and Patent Owner jointly request that the
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`Board dismiss this proceeding in its entirety.
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`2
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`IPR2018-01265 (USP 6,054,336)
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`Joint Motion to Terminate
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`Respectfully submitted,
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`Dated: December 13, 2018
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`/s/ Brian M. Berliner
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`Brian M. Berliner (Reg. No. 34,549)
`bberliner@omm.com
`Ryan Yagura (Reg. No. 47,191)
`ryagura@omm.com
`Nicholas J. Whilt (Reg. No. 72,081)
`nwhilt@omm.com
`O’Melveny & Myers LLP
`400 South Hope Street, 18th Floor
`Los Angeles, CA 90071
`Telephone: 213.430.6000
`Fax: 213.430.6407
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`John Kappos (Reg. No. 37,861)
`jkappos@omm.com
`O’Melveny & Myers LLP
`610 Newport Center Drive, 17th Floor
`Newport Beach, CA 92660
`Telephone: 949.823.6900
`Fax: 949.823.6994
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`Mark Liang (Reg. No. L1031)
`mliang@omm.com
`O’Melveny & Myers LLP
`2 Embarcadero Ctr., 28th Floor
`San Francisco, CA 94111
`Telephone: 415.984.8700
`Fax: 415.984.8701
`Counsel for Petitioner
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`By: /s/ Robert Steinberg
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`Robert Steinberg (Reg. No. 33,144)
`bob.steinberg@lw.com
`Jonathan M. Strang (Reg. No. 61,724)
`jonathan.strang@lw.com
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`3
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`IPR2018-01265 (USP 6,054,336)
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`Joint Motion to Terminate
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`Matthew J. Moore (Reg. No. 42,012)
`matthew.moore@lw.com
`Latham & Watkins LLP
`555 Eleventh Street, NW, Ste. 1000
`Washington, DC 20004-1304
`Telephone: 202.637.2200
`Fax: 202.637.2201
`Counsel for Patent Owner
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`4
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`IPR2018-01265 (USP 6,054,336)
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`Joint Motion to Terminate
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I certify that on this 13th day of December
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`2018, a copy of Joint Motion to Terminate was served by electronic mail on
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`Patent Owner’s lead and backup counsel at the following email addresses:
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`Robert Steinberg
`Latham & Watkins LLP
`355 South Grand Avenue, Ste. 100
`Los Angeles, CA 90071-1560
`Tel.: (213) 485-1234
`bob.steinberg@lw.com
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`Matthew J. Moore
`Latham & Watkins LLP
`555 Eleventh St., N.W., Ste. 1000
`Washington, DC 20004-1304
`Tel.: (202) 637-2200
`matthew.moore@lw.com
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`December 13, 2018
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`Jonathan M. Strang
`Latham & Watkins LLP
`555 Eleventh St., N.W., Ste. 1000
`Washington, DC 20004-1304
`Tel.: (202) 637-2200
`jonathan.strang@lw.com
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`/s/ Brian M. Berliner
`Brian M. Berliner (Reg. No. 34,549)
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