`Trials@uspto.gov
`571-272-7822 Entered: December 10, 2018
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.
`and SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`INVENSAS BONDING TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2019-00001 (Patent 7,553,744 B2),
`Cases IPR2019-00004 and IPR2019-00005 (Patent 7,807,549 B2), and
`Case IPR2019-00006 (Patent 7,871,898 B2)
`____________
`
`
`
`Before KEN B. BARRETT, FRANCES L. IPPOLITO, and
`CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting Patent Owner’s
`Motions for a District Court-Type Claim Construction Approach
`37 C.F.R. § 42.100(b)
`
`
`
`IPR2019-00001 (Patent 7,553,744 B2)
`IPR2019-00004, IPR2019-00005 (Patent 7,807,549 B2)
`IPR2019-00006 (Patent 7,871,898 B2)
`
`Samsung Electronics Co., Ltd. and Samsung Electronics America,
`
`Inc. (collectively, “Petitioner”) filed on October 1, 2018, Petitions requesting
`inter partes review of U.S. Patent No. 7,553,744 B2 (“the ’744 patent,”
`Ex. 10011), U.S. Patent No. 7,807,549 B2 (“the ’549 patent”), and U.S.
`Patent 7,871,898 B2 (“the ’898 patent”). IPR2019-00001, Paper 12;
`IPR2019-0004, Paper 1; IPR2019-00005, Paper 1; IPR2019-00006, Paper 1.
`Invensas Bonding Technologies, Inc. (“Patent Owner”) filed in each case on
`October 31, 2018, “Patent Owner’s Motion for District Court (Phillips[3])
`Patent Claim Construction Under 37 C.F.R. § 42.100(b).” Paper 7. Patent
`Owner represents that Petitioner does not oppose the motions. Id. at 1.
`
`“A party may request a district court-type claim construction approach
`to be applied if a party certifies that the involved patent will expire within 18
`months from the entry of the Notice of Filing Date Accorded to Petition.”
`37 C.F.R. § 42.100(b) (2018).4 The Notices of Filing Date Accorded were
`entered on October 17, 2018, in IPR2019-00001, IPR2019-00004, and
`IPR2019-00005 and on October 26, 2018, in IPR2019-00006. Patent Owner
`certifies that the ’744 patent, the ’549 patent, and the ’898 patent will expire
`
`
`1 Each subject patent is filed as Exhibit 1001 in the respective case.
`2 Unless otherwise noted, citations herein are to papers filed in
`IPR2019-00001. Similar motions were filed in IPR2019-00004,
`IPR2019-00005, and IPR2019-00006.
`3 Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)
`4 Because the Petitions were filed prior to November 13, 2018, the effective
`date of Changes to the Claim Construction Standard for Interpreting Claims
`in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed.
`Reg. 51,340 (Oct. 11, 2018), the previous version of § 42.100(b) is
`applicable to these cases.
`
`2
`
`
`
`IPR2019-00001 (Patent 7,553,744 B2)
`IPR2019-00004, IPR2019-00005 (Patent 7,807,549 B2)
`IPR2019-00006 (Patent 7,871,898 B2)
`
`within 18 months of the entry of the Notice of Filing Date Accorded, and
`specifically certifies that those three patents will expire on February 16,
`2020. Paper 7, 2–3. That date is twenty years after the earliest application
`filing date referenced in each of the three patents. See, e.g., the ’744 patent
`(Ex. 1001), 1:4–13.
`
`On this record, we are persuaded that Rule 42.100(b) applies to this
`case, that Patent Owner has complied with the requirements of that rule, and
`that the ’744 patent, the ’549 patent, and the ’898 patent will expire
`within 18 months of the entry of the Notices of Filing Date Accorded to
`Petition. Therefore, we grant Patent Owner’s unopposed motions.
`
`In granting these motions, we merely are identifying the claim
`construction approach that will be applied in this case. We have not
`conducted yet, in the cases before us, a claim construction analysis, and this
`order should not be construed as an adoption at this time of any claim
`construction that may have been issued by a district court.
`
`Accordingly, it is
`
`ORDERED that Patent Owner’s motions for a district court-type
`claim construction approach is granted.
`
`
`
`
`
`3
`
`
`
`IPR2019-00001 (Patent 7,553,744 B2)
`IPR2019-00004, IPR2019-00005 (Patent 7,807,549 B2)
`IPR2019-00006 (Patent 7,871,898 B2)
`
`
`For PETITIONER:
`Marc Pensabene
`Nicholas Whilt
`Laura Bayne
`Clarence Rowland
`O’MELVENY & MYERS LLP
`mpensabene@omm.com
`nwhilt@omm.com
`lbayne@omm.com
`crowland@omm.com
`
`For PATENT OWNER:
`
`Bob Steinberg
`Jonathan Strang
`Matthew Moore
`LATHAM & WATKINS LLP
`bob.steinberg@lw.com
`jonathan.strang@lw.com
`matthew.moore@lw.com
`
`
`
`
`4
`
`
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