Entered: December 21, 2018
`
`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
`_______________________
`
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.74
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`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
`_______________________
`
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.74
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2018-01806 (USP 7,697,829)
`
`
`
`Joint Motion to Terminate
`
`Pursuant to 35 U.S.C. § 317(a), 37 C.F.R. § 42.74, and the Board’s
`
`December 20, 2018 correspondence, Petitioner Samsung Electronics Co., Ltd.
`
`(“Petitioner”) and Patent Owner DigitalOptics Corporation MEMS (“Patent
`
`Owner”) (collectively, “the Parties”) jointly request termination of the inter partes
`
`review of U.S. Patent No. 7,697,829 (“’829 patent”), Case No. IPR2018-01806.
`
`Pursuant to 37 C.F.R. §§ 42.5 and 42.72, the Board may terminate a trial
`
`without rendering a final written decision, where appropriate, including pursuant to
`
`a joint request under 35 U.S.C. §§ 317(a) or 327(a). See Winplus N. Am., Inc. v.
`
`Pilot, Inc., IPR2018-00488, Paper 12 (P.T.A.B. Oct. 24, 2018).
`
`This proceeding is still in its preliminary stages. A Petition for inter partes
`
`review was filed on October 3, 2018 (Paper No. 1), and the Board has not yet
`
`issued a decision on institution. The Parties have settled their dispute and
`
`respectfully submit that termination is proper here.
`
`The ’829 patent was the subject of a District Court action in the Eastern
`
`District of Texas, Civil Action No. 2-17-cv-00669, entitled FotoNation Ltd. v.
`
`Samsung Electronics Co., Ltd., which action is being dismissed concurrently with
`
`prejudice. Dismissal of the Petition here would promote efficiency and minimize
`
`unnecessary costs.
`
`The Parties executed a Confidential Settlement Agreement to terminate this
`
`proceeding effective December 7, 2018. This agreement was made binding on
`
`
`
`1
`
`
`
`IPR2018-01806 (USP 7,697,829)
`
`Patent Owner DigitalOptics Corporation MEMS by Consent Letter of the same
`
`Joint Motion to Terminate
`
`
`
`date. Both the Settlement Agreement and a Consent Letter are submitted
`
`concurrently herewith. In accordance with 35 U.S.C. § 317 and 37 C.F.R.
`
`§ 42.74(b), also submitted concurrently herewith is a joint request that the
`
`Confidential Settlement Agreement and Consent Letter be treated as business
`
`confidential information, be kept separate from the file of the involved patent, and
`
`be made available only to the Federal Government agencies on written request, or
`
`to any person on showing of good cause under 35 U.S.C. § 317 and 37 C.F.R.
`
`§ 42.74(c). A true and correct copy of the Settlement Agreement and Consent
`
`Letter are submitted with that Request as Confidential Exhibits 2001 and 2002.
`
`Petitioner and Patent Owner certify that there are no other agreements, oral
`
`or written, between the parties made in connection with, or in contemplation of, the
`
`termination of the proceeding. Both Petitioner and Patent Owner support
`
`termination of the proceeding.
`
`CONCLUSION
`
`For the foregoing reasons, Petitioner and Patent Owner jointly request that
`
`the Board dismiss this proceeding in its entirety.
`
`
`
`
`
`
`
`
`
`
`
`Dated: December 21, 2018
`
`
`
`
`
`
`Respectfully submitted,
`
`By: / Jonathan M. Strang /
`
`Jonathan M. Strang (Reg. No. 61,724)
`jonathan.strang@lw.com
`
`2
`
`
`
`IPR2018-01806 (USP 7,697,829)
`
`
`
`
`Joint Motion to Terminate
`
`Robert Steinberg (Reg. No. 33,144)
`bob.steinberg@lw.com
`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
`
`S. Giri Pathmanaban (Reg. No. 75,986)
`Giri.pathmanaban@lw.com
`Latham & Watkins LLP
`140 Scott Drive
`Menlo Park, CA 94025
`Telephone: 650.328.4600
`Fax: 650.463.2600
`
`Counsel for Patent Owner
`
`By: / Naveen Modi /
`Naveen Modi (Reg. No. 46,224)
`Joseph E. Palys (Reg. No. 46,508)
`Quadeer A. Ahmed (Reg. No. 60,835)
`Paromita Chatterjee (Reg. No. 63,721)
`Arvind Jairam (Reg. No. 62,759)
`PH-Samsung-Fotonation-
`IPR@paulhastings.com
`Paul Hastings LLP
`875 15th St. N.W.,
`Washington, D.C., 20005
`Telephone: 202.551.1700
`Fax: 202.551.1705
`
`Counsel for Petitioner
`
`
`
`3
`
`
`
`IPR2018-01806 (USP 7,697,829)
`
`
`
`
`Joint Motion to Terminate
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), I certify that on this 21st day of
`
`December, 2018, a copy of Joint Motion to Terminate was served by
`
`electronic mail on Petitioner’s lead and backup counsel at the following email
`
`addresses:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Naveen Modi (Reg. No. 46,224)
`Joseph E. Palys (Reg. No. 46,508)
`Quadeer A. Ahmed (Reg. No. 60,835)
`Paromita Chatterjee (Reg. No. 63,721)
`Arvind Jairam (Reg. No. 62,759)
`Paul Hastings LLP
`875 15th St. N.W.
`Washington, D.C., 20005
`Tel.: 202.551.1700
`PH-Samsung-Fotonation-IPR@paulhastings.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`By: / Jonathan M. Strang /
`Jonathan M. Strang (Reg. No. 61,724)
`jonathan.strang@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
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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
