`Tel: 571.272.7822
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`Paper No. 9
`Entered: February 1, 2019
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`v.
`
`DIGITALOPTICS CORPORATION MEMS,
`Patent Owner.
`_______________________
`Case IPR2018-01806
`U.S. Patent No. 7,697,829 B1
`_______________________
`
`
`Before: DANIEL N. FISHMAN, STACEY G. WHITE, and
`JOHN. P. PINKERTON, Administrative Patent Judges.
`
`PINKERTON, Administrative Patent Judge.
`
`
`ORDER
`Dismissing the Petition and Granting Request to Treat
`Settlement Documents as Confidential Business Information
`
`37 C.F.R. §§ 42.5(a), 42.71(a), 42.74
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`IPR2018-01806
`Patent No. 7,697,829 B1
`
`
`
`On December 21, 2018, Petitioner Samsung Electronics Co., Ltd.
`
`(“Petitioner”) and Patent Owner DigitalOptics Corporation MEMS (“Patent
`Owner”) (collectively, “the Parties”) filed a Joint Motion to Terminate Proceeding.
`Paper 6, (“Joint Motion to Terminate” or “Mot.”). Together with the Joint Motion
`to Terminate, the Parties filed (1) a copy of their written Confidential Settlement
`and License Agreement (Ex. 2001, “Agreement”) and (2) a copy of their
`Confidential Consent Letter (Ex. 2002, “Consent Letter”). The Parties also filed a
`Joint Request to Treat Settlement Agreement and Consent Letter as Business
`Confidential Under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 7, (“Joint
`Request”).
`
`In the Joint Motion to Terminate, the Parties indicate they have settled their
`dispute. Mot. 1. The Parties state that the district court proceeding involving U.S.
`Patent No. 7,697,829 B1 (“’829 patent”) is being dismissed concurrently with
`prejudice. Id. The Parties also state they executed the Agreement to terminate this
`proceeding effective December 7, 2018. Id.
`
`The Board generally expects that a case “will terminate after the filing of a
`settlement agreement, unless the Board has already decided the merits.” Office
`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012); see also
`35 U.S.C. § 317(a) and 37 C.F.R. § 42.71(a). Here, the case is at a preliminary
`stage—one where the Patent Owner has yet to file its Patent Owner Preliminary
`Response.
`
`In view of the early stage of the proceeding and the settlement between the
`parties, we determine that it is appropriate to dismiss the Petition. See 37 C.F.R.
`§§ 42.5(a) and 42.71(a). We also determine that it is appropriate to treat the
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`IPR2018-01806
`Patent No. 7,697,829 B1
`
`
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`Agreement (Ex. 2001) and Consent Letter (Ex. 2002) as business confidential
`information to be kept separate from the ’829 patent file. See 35 U.S.C. § 317(b)
`and 37 C.F.R. § 42.74(c).
`This paper does not constitute a final written decision pursuant to 35 U.S.C.
`§ 318(a).
`
`
`
`
`ORDER
`
`In view of the foregoing, it is:
`
`ORDERED that the Parties’ Joint Motion to Terminate (Paper 6) is granted
`
`and the Petition for Inter Partes Review of U.S. Patent No. 7,697,829 B1 is
`dismissed; and
`
`FURTHER ORDERED that the Joint Request (Paper 7) to treat the
`Agreement and Consent Letter as business confidential information, and be kept
`separate from the ’829 patent file, is granted.
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`IPR2018-01806
`Patent No. 7,697,829 B1
`
`For PETITIONER:
`Naveen Modi
`Joseph Palys
`Quadeer Ahmed
`Paromita Chatterjee
`Arvind Jairam
`PAUL HASTINGS LLP
`naveenmodi@paulhastings.com
`josephpalys@paulhastings.com
`quadeerahmed@paulhastings.com
`mitachatterjee@paulhastings.com
`arvindjairam@paulhastings.com
`
`For PATENT OWNER:
`Jon Strang
`Bob Steinberg
`Matthew Moore
`Giri Pathmanaban
`LATHAM & WATKINS LLP
`jonathan.strang@lw.com
`bob.steinberg@lw.com
`matthew.moore@lw.com
`giri.pathmanaban@lw.com
`
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`4
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