throbber
Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 28
`Entered: May 9, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS
`AMERICA, INC., SAMSUNG SEMICONDUCTOR, INC.,
`SK HYNIX INC., and SK HYNIX AMERICA INC.,
`Petitioner,
`v.
`BITMICRO, LLC,
`Patent Owner.
`_______________
`
`IPR2018-01410 and IPR2018-01411 (Patent 6,529,416 B2)
`IPR2018-01545 (Patent 8,093,103 B2)
`IPR2018-01720 (Patent 7,826,243 B2)1
`_______________
`
`
`Before KEN B. BARRETT, KRISTINA M. KALAN, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`PER CURIAM.
`
`
`ORDER
`Termination of the Proceedings with Respect to Samsung Electronics Co.,
`Ltd., Samsung Electronics America, Inc., and Samsung Semiconductor, Inc.
`35 U.S.C. § 317(a)
`
`
`1 This Order addresses issues that are the same in the above-identified
`proceedings. We exercise our discretion to issue one Order to be entered in
`each proceeding. The Parties are not authorized to use this joint heading and
`filing style in their papers.
`
`

`

`IPR2018-01410 and IPR2018-01411 (Patent 6,529,416 B2)
`IPR2018-01545 (Patent 8,093,103 B2)
`IPR2018-01720 (Patent 7,826,243 B2)
`
`
`We instituted trial in each of the above-identified proceedings
`(IPR2018-01410, Paper 14 (January 23, 2019); IPR2018-01411, Paper 14
`(January 23, 2019); IPR2018-01545, Paper 14 (March 7, 2019); and
`IPR2018-01720, Paper 14 (March 29, 2019)). On April 24, 2019, the parties
`filed a Joint Motion to Terminate in each of these proceedings (collectively
`“Joint Motions to Terminate”) requesting that these proceedings be
`terminated with respect to Samsung Electronics Co., Ltd., Samsung
`Electronics America, Inc., and Samsung Semiconductor, Inc. (collectively,
`“Samsung”) pursuant to 35 U.S.C. § 317(a). Paper 24.2 The parties
`represent that SK Hynix Inc. and SK Hynix America Inc. (“SK Hynix”)
`intend to continue with each of these proceedings. Id. With their motion to
`terminate, Samsung and Patent Owner also filed a copy of a written
`settlement agreement terminating the underlying district court litigation
`between them and terminating the underlying International Trade
`Commission investigation as to Samsung. Ex. 1300.3 Samsung and Patent
`Owner represent that the “settlement agreement is the only agreement or
`understanding between Samsung and Patent Owner made in connection
`with, or in contemplation of dismissing Samsung.” Paper 24, 3. In each of
`these proceedings, the parties filed a Joint Request that the settlement
`
`
`2 For purposes of expediency, we cite to Papers filed in IPR2018-01410.
`Petitioner filed a similar Joint Motion to Terminate in IPR2018-01411
`(Paper 24), IPR2018-01545 (Paper 16), and IPR2018-01720 (Paper 16).
`3 For purposes of expediency, we cite to the copy of the written settlement
`agreement filed in IPR2018-01410. Petitioner also filed a copy of the
`written settlement agreement in each of IPR2018-01411 (Ex. 1300),
`IPR2018-01545 (Ex. 1300), and IPR2018-01720 (Ex. 1300).
`
` 2
`
`
`
`
`
`

`

`IPR2018-01410 and IPR2018-01411 (Patent 6,529,416 B2)
`IPR2018-01545 (Patent 8,093,103 B2)
`IPR2018-01720 (Patent 7,826,243 B2)
`
`agreement be kept confidential. Paper 25.4
`A decision on the merits has not been reached, yet, in these
`proceedings. Accordingly, these proceedings are terminated with respect to
`Samsung. 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.”).
`Accordingly, it is
`ORDERED that the Joint Requests that the settlement agreements
`(IPR2018-01410, Ex. 1300; IPR2018-01411, Ex. 1300; IPR2018-01545, Ex.
`1300; and IPR2018-01720, Ex. 1300) 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), are granted;
`FURTHER ORDERED the Joint Motions to Terminate the above-
`identified proceedings with respect to Samsung are granted; and
`FURTHER ORDERED that the above-identified proceedings will
`continue with SK Hynix Inc. and SK Hynix America Inc. as the sole named
`petitioners.
`
`
`
`
`4 Petitioner filed similar Joint Requests in IPR2018-01411 (Paper 25),
`IPR2018-01545 (Paper 17), and IPR2018-01720 (Paper 17).
`
` 3
`
`
`
`
`
`

`

`IPR2018-01410 and IPR2018-01411 (Patent 6,529,416 B2)
`IPR2018-01545 (Patent 8,093,103 B2)
`IPR2018-01720 (Patent 7,826,243 B2)
`
`FOR PETITIONER:
`
`F. Christopher Mizzo
`Craig Murray
`Gregory S. Arovas
`G. William Foster
`KIRKLAND & ELLIS LLP
`chris.mizzo@kirkland.com
`craig.murray@kirkland.com
`greg.arovas@kirkland.com
`billy.foster@kirkland.com
`
`Joseph Colaianni
`Linhong Zhang
`David Holt
`FISH & RICHARDSON P.C
`colaianni@fr.com
`lwzhang@fr.com
`holt2@fr.com
`
`FOR PATENT OWNER:
`
`Wayne M. Helge
`James T. Wilson
`Aldo Noto
`DAVIDSON BERQUIST JACKSON & GOWDEY L.L.P.
`whelge@dbjg.com
`jwilson@dbjg.com
`anoto@davidsonberquist.com
`
` 4
`
`
`
`
`
`

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