`
`Trials@uspto.gov
`Entered: January 14, 2019
`
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NITTO DENKO CORP.,
`Petitioner,
`
`v.
`
`HUTCHINSON TECHNOLOGY INC.,
`Patent Owner.
`
`
` IPR2018-01300 (Patent 8,169,746)1
`IPR2018-01301 (Patent 6,714,385)
`IPR2018-01302 (Patent 6,295,183)
`IPR2018-01303 (Patent 7,468,866)
`IPR2018-01304 (Patent 5,883,758)
`IPR2018-01305 (Patent 7,532,438)
`IPR2018-01042 (Patent 7,781,679)
`
`
`Before THU A. DANG, BARBARA A. PARVIS, SHEILA F. McSHANE,
`STACY B. MARGOLIES, and ALEX S. YAP, Administrative Patent
`Judges.2
`
`PER CURIAM.
`
`SETTLEMENT
`Prior to Institution of Trial
`35 U.S.C. § 316(a)(4); 37 C.F.R. § 42.74
`
`
`1 This Order applies to each of the above-listed proceedings. We exercise
`our discretion to issue one Order to be filed in each proceeding. The parties
`are not authorized to use this heading style in any subsequent papers.
` This is not an expanded panel of the Board. It is a listing of all Judges on
`the panels of the above-listed proceedings.
`
` 2
`
`
`
`IPR2018-01300 (Patent 8,169,746)
`IPR2018-01301 (Patent 6,714,385)
`IPR2018-01302 (Patent 6,295,183)
`IPR2018-01303 (Patent 7,468,866)
`IPR2018-01304 (Patent 5,883,758)
`IPR2018-01305 (Patent 7,532,438)
`IPR2018-01042 (Patent 7,781,679)
`
`On January 11, 2019, the parties filed Joint Motions to Terminate
`
`pursuant to 35 U.S.C. § 317 in each of the above-captioned cases. IPR2018-
`01300, Paper 8 (“Mot.”)3; IPR2018-01301, Paper 7; IPR2018-01302, Paper
`6; IPR2018-01303, Paper 7; IPR2018-01304, Paper 7; IPR2018-01305,
`Paper 7; IPR2018-01042, Paper 7. In addition, pursuant to 35 U.S.C.
`§ 317(b) and 37 C.F.R. § 42.74(c), Petitioner filed a copy of the Settlement
`Agreement, and a related agreement, along with Joint Requests That the
`Parties’ Agreements Be Treated As Business Confidential Information,
`requesting that the agreements be kept separate from the patent file in each
`of the abovecaptioned cases and be treated as business confidential
`information. IPR2018-01300, Paper 9; IPR2018-01301, Paper 8; IPR2018-
`01302, Paper 7; IPR2018-01303, Paper 8; IPR2018-01304, Paper 8;
`IPR2018-01305, Paper 8; IPR2018-01042, Paper 8.
`The cases IPR2018-01300, IPR2018-01301, IPR2018-01302,
`IPR2018-01303, IPR2018-01304, IPR2018-01305, and IPR2018-01042, are
`in the preliminary stages and no decisions whether to institute trials have
`been made. The parties indicate that terminations of the proceedings are
`appropriate because a settlement has been reached disposing of related
`disputes. Mot. 1. The parties represent that all disputes have been settled,
`
`
`3 Further citations are to IPR2018-01300 as representative, except as
`otherwise noted herein.
`
`2
`
`
`
`IPR2018-01300 (Patent 8,169,746)
`IPR2018-01301 (Patent 6,714,385)
`IPR2018-01302 (Patent 6,295,183)
`IPR2018-01303 (Patent 7,468,866)
`IPR2018-01304 (Patent 5,883,758)
`IPR2018-01305 (Patent 7,532,438)
`IPR2018-01042 (Patent 7,781,679)
`
`agreements have been executed authorizing the requests for termination, and
`all related settlement agreements have been filed. Id. at 2–3.
`
`Under these circumstances, we determine that it is appropriate to
`terminate each case without rendering a decision on institution or final
`written decision. 37 C.F.R. § 42.74. Therefore, the Joint Motions to
`Terminate are granted.
`
`Accordingly, it is
`ORDERED that the parties’ requests that the Settlement Agreement
`and related agreement in each of the above-captioned cases be treated as
`business confidential information, to be kept separate from the patent file,
`are granted;
`FURTHER ORDERED that the Settlement Agreements and related
`agreements (IPR2018-01300, Exs. 1021, 1022; IPR2018-01301, Exs. 1010,
`1011; IPR2018-01302, Exs. 1010, 1011; IPR2018-01303, Exs. 1005, 1006;
`IPR2018-01304, Exs. 1006, 1007; IPR2018-01305, Exs. 1012, 1013; and
`IPR2018-01042, Exs. 1016, 1017) shall be treated as business confidential
`information and shall be kept separate from the pertinent file consistent with
`37 C.F.R. § 42.74(b);
`FURTHER ORDERED that the Joint Motions to Terminate are
`granted; and
`FURTHER ORDERED that the proceedings are terminated.
`
`
`
`3
`
`
`
`IPR2018-01300 (Patent 8,169,746)
`IPR2018-01301 (Patent 6,714,385)
`IPR2018-01302 (Patent 6,295,183)
`IPR2018-01303 (Patent 7,468,866)
`IPR2018-01304 (Patent 5,883,758)
`IPR2018-01305 (Patent 7,532,438)
`IPR2018-01042 (Patent 7,781,679)
`
`PETITIONER:
`
`Alex V. Chachkes
`K. Patrick Herman
`Donald E. Daybell
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`A34PTABDocket@orrick.com
`P52PTABDocket@orrick.com
`D2DPTABDocket@orrick.com
`
`PATENT OWNER:
`
`Jennifer Hayes
`Daniel J. Burnham
`Matthew Werber
`NIXON PEABODY LLP
`jenhayes@nixonpeabody.com
`dburnham@nixonpeabody.com
`mwerber@nixonpeabody.com
`
`
`
`
`
`4
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
