`571-272-7822
`
` Paper No. 10
` Entered: December 21, 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)
`Case IPR2019-00006 (Patent 7,871,898 B2)
`Case IPR2019-00007 (Patent 9,431,368 B2)
`Cases IPR2019-00020 and IPR2019-00021 (Patent 9,391,143 B2), and
`Cases IPR2019-00022 and IPR2019-00023 (Patent 8,153,505 B2)
`____________
`
`Before KEN B. BARRETT, FRANCES L. IPPOLITO, and
`CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`ORDER
`Dismissing Petition Pursuant to Settlement
`37 C.F.R. §§ 42.71(a), 42.74
`
`
`
`IPR2019-00001 (Patent 7,553,744 B2)
`IPR2019-00004, IPR2019-00005 (Patent 7,807,549 B2)
`IPR2019-00006 (Patent 7,871,898 B2)
`IPR2019-00007 (Patent 9,431,368 B2)
`IPR2019-00020, IPR2019-00021 (Patent 9,391,143 B2)
`IPR2019-00022, IPR2019-00023 (Patent 8,153,505 B2)
`
`The parties filed, in each of the captioned cases, a “Joint Motion to
`
`Terminate Proceeding Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74”
`and a “Joint Request to File Settlement Agreement and Consent Letter as
`Business Confidential Information under 35 U.S.C. § 317 and 37 C.F.R.
`§ 42.74.” E.g., IPR2019-00001, Papers 9, 10.1 The parties also filed under
`seal a copy of a written settlement agreement and a consent letter.
`Exhibits 1020, 1021.
`
`Patent Owner has not filed Preliminary Responses in these cases, and
`the Board has not yet issued institution decisions. The parties represent that
`they have stipulated to a dismissal with prejudice of the related District
`Court action and that “[t]he Parties have settled their dispute.” Paper 9, 1.
`Under these circumstances, we determine that it is appropriate to dismiss the
`Petition. See 37 C.F.R. §§ 42.5(a), 42.71(a). After reviewing the parties’
`settlement agreement and associated consent letter, we find that the
`settlement agreement and consent letter contain confidential business
`information regarding the terms of settlement and good cause exists to treat
`the settlement agreement as business confidential information pursuant to 35
`U.S.C. § 317(b).
`
`This paper does not constitute a final written decision pursuant to 35
`U.S.C. § 318(a).
`
`
`1 Unless otherwise noted, citations herein are to papers filed in
`IPR2019-00001. The same or similar papers were filed in the other
`captioned 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)
`IPR2019-00007 (Patent 9,431,368 B2)
`IPR2019-00020, IPR2019-00021 (Patent 9,391,143 B2)
`IPR2019-00022, IPR2019-00023 (Patent 8,153,505 B2)
`
`Accordingly, it is
`
`ORDERED that the Petition in each of the captioned cases is
`
`dismissed;
`
`FURTHER ORDERED that the parties’ settlement agreement and
`consent letter (IPR2019-00001 and IPR2019-00006, Exhibits 1020, 1021;
`IPR2019-00004 and IPR2019-00005, Exhibits 1021, 1022; IPR2019-00007,
`Exhibits 1014, 1015; IPR2019-00020, Exhibits 1015, 1016; IPR2019-00021,
`Exhibits 1018, 1019; IPR2019-00022, Exhibits 1027, 1028; IPR2019-00023,
`Exhibits 1026, 1027) shall be treated as business confidential information
`and kept separate from the files of each subject patent and remain designated
`as “Parties and Board Only.”
`
`
`
`3
`
`
`
`IPR2019-00001 (Patent 7,553,744 B2)
`IPR2019-00004, IPR2019-00005 (Patent 7,807,549 B2)
`IPR2019-00006 (Patent 7,871,898 B2)
`IPR2019-00007 (Patent 9,431,368 B2)
`IPR2019-00020, IPR2019-00021 (Patent 9,391,143 B2)
`IPR2019-00022, IPR2019-00023 (Patent 8,153,505 B2)
`
`
`For PETITIONER:
`Marc Pensabene
`mpensabene@omm.com
`
`Nicholas Whilt
`nwhilt@omm.com
`
`Laura Bayne
`lbayne@omm.com
`
`Clarence Rowland
`crowland@omm.com
`
`
`For PATENT OWNER:
`
`Bob Steinberg
`bob.steinberg@lw.com
`
`Jon Strang
`jonathan.strang@lw.com
`
`Matthew Moore
`matthew.moore@lw.com
`
`4
`
`
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