Entered: December 13, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
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`SAMSUNG ELECTRONICS CO., LTD. AND SAMSUNG ELECTRONICS
`AMERICA, INC.,
`Petitioner,
`v.
`INVENSAS BONDING TECHNOLOGIES, INC.,
`Patent Owner.
`_______________________
`Case IPR2019-00007
`U.S. Patent No. 9,431,361
`_______________________
`
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`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.74
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
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`SAMSUNG ELECTRONICS CO., LTD. AND SAMSUNG ELECTRONICS
`AMERICA, INC.,
`Petitioner,
`v.
`INVENSAS BONDING TECHNOLOGIES, INC.,
`Patent Owner.
`_______________________
`Case IPR2019-00007
`U.S. Patent No. 9,431,361
`_______________________
`
`
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.74
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`IPR2019-00007 (USP 9,431,368)
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`Joint Motion to Terminate
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`Pursuant to 35 U.S.C. § 317(a), 37 C.F.R. § 42.74, and the Board’s December
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`12, 2018 correspondence, Petitioner Samsung Electronics Co., Ltd. and Samsung
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`Electronics America, Inc. (“Petitioner”) and Patent Owner Invensas Bonding
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`Technologies, Inc. (“Patent Owner”) (collectively, “the Parties”) jointly request
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`termination of the inter partes review of U.S. Patent No. 9,431,368 (“’368 patent”),
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`Case No. IPR2019-00007.
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`Pursuant to 37 C.F.R. §§ 42.5 and 42.72, the Board may terminate a trial
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`without rendering a final written decision, where appropriate, including pursuant to
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`a joint request under 35 U.S.C. §§ 317(a) or 327(a). See Winplus N. Am., Inc. v.
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`Pilot, Inc., IPR2018-00488, Paper 12 (P.T.A.B. Oct. 24, 2018).
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`This proceeding is still in its preliminary stages. A Petition for inter partes
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`review was filed on October 1, 2018 (Paper No. 1), and the Board has not yet issued
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`a decision on institution. The Parties have settled their dispute and respectfully
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`submit that termination is proper here.
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`The ’368 patent was the subject of a District Court action in the District of
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`New Jersey, Civil Action No. 17-7609-RMB-KMW, entitled Invensas Bonding
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`Techs. v. Samsung Electronics America, Inc., which the parties stipulated to dismiss
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`with prejudice. A dismissal of the Petition here would promote efficiency and
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`minimize unnecessary costs.
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`1
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`IPR2019-00007 (USP 9,431,368)
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`Joint Motion to Terminate
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`Samsung and Patent Owner’s parent Xperi Corporation executed a
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`Confidential Settlement Agreement to terminate this proceeding effective December
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`7, 2018. This agreement was made binding on Patent Owner Invensas Bonding
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`Technologies, Inc. by Consent Letter of the same date. Both the Settlement
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`Agreement and a Consent Letter are submitted concurrently herewith. In accordance
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`with 35 U.S.C. § 317 and 37 C.F.R. § 42.74(b), also submitted concurrently herewith
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`is a Joint Request that the Confidential Settlement Agreement and Consent Letter be
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`treated as business confidential information, be kept separate from the file of the
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`involved patent, and be made available only to the Federal Government agencies on
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`written request, or to any person on showing of good cause under 35 U.S.C. § 317
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`and 37 C.F.R. § 42.74(c). True and correct copies of the Settlement Agreement and
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`Consent Letter are submitted with that Request as Confidential Exhibits 1014 and
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`1015.
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`Petitioner and Patent Owner certify that there are no other agreements, oral or
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`written, between the parties made in connection with, or in contemplation of, the
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`termination of the proceeding. Both Petitioner and Patent Owner support
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`termination of the proceeding.
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`CONCLUSION
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`For the foregoing reasons, Petitioner and Patent Owner jointly request that the
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`Board dismiss this proceeding in its entirety.
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`2
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`IPR2019-00007 (USP 9,431,368)
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`Joint Motion to Terminate
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`Respectfully submitted,
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`Dated: December 13, 2018
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`/s/ Marc Pensabene
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`Marc Pensabene (Reg. No. 37,416)
`mpensabene@omm.com
`Laura A. Bayne (Reg. No. 72,420)
`lbayne@omm.com
`7 Times Square
`Times Square Tower
`New York, NY 10036
`Telephone: 212.326.2000
`Fax: 213.430.6407
`
`Nicholas J. Whilt (Reg. No. 72,081)
`nwhilt@omm.com
`Clarence Rowland (Reg. No. 73,775)
`crowland@omm.com
`O’Melveny & Myers LLP
`400 South Hope Street, 18th Floor
`Los Angeles, CA 90071
`Telephone: 213.430.6000
`Fax: 213.430.6407
`Counsel for Petitioner
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`/s/ Robert Steinberg
`
`Robert Steinberg (Reg. No. 33,144)
`bob.steinberg@lw.com
`Jonathan M. Strang (Reg. No. 61,724)
`jonathan.strang@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
`Counsel for Patent Owner
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`3
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`IPR2019-00007 (USP 9,431,368)
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`Joint Motion to Terminate
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I certify that on this 13th day of December
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`2018, a copy of Joint Motion to Terminate was served by electronic mail on
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`Patent Owner’s lead and backup counsel at the following email addresses:
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`Robert Steinberg
`Latham & Watkins LLP
`355 South Grand Avenue, Ste. 100
`Los Angeles, CA 90071-1560
`Tel.: (213) 485-1234
`bob.steinberg@lw.com
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`Matthew J. Moore
`Latham & Watkins LLP
`555 Eleventh St., N.W., Ste. 1000
`Washington, DC 20004-1304
`Tel.: (202) 637-2200
`matthew.moore@lw.com
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`December 13, 2018
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`Jonathan M. Strang
`Latham & Watkins LLP
`555 Eleventh St., N.W., Ste. 1000
`Washington, DC 20004-1304
`Tel.: (202) 637-2200
`jonathan.strang@lw.com
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`/s/ Marc Pensabene
`Marc Pensabene (Reg. No. 37,416)
`
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