`Trials@uspto.gov
`571-272-7822 Entered: January 30, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AVX CORPORATION,
`Petitioner,
`
`v.
`
`SAMSUNG ELECTRO-MECHANICS CO., LTD.,
`Patent Owner.
`____________
`
`Case PGR2017-00010
`Patent 9,326,381 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`RAMA G. ELLURU, Administrative Patent Judges.
`
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Conduct of the proceeding
`37 C.F.R. § 42.5
`
`AVX Corporation (“Petitioner”) filed a Petition for post-grant review
`
`of claims 1–19 of U.S. Patent No. 9,326,381 B2 (Ex. 1001, “the
`
`’381 patent”). Paper 2 (“Pet.”). Samsung Electro-Mechanics Co., Ltd.
`
`(“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
`
`On July 18, 2017, we instituted trial as to claims 1–4, 6–11, and 13–19 of
`
`
`
`PGR2017-00010
`Patent 9,326,381 B2
`
`the ’381 patent. Paper 11. On January 29, 2018, Patent Owner informed the
`
`Board that the parties have reached a settlement agreement and seek
`
`authorization to file a joint motion to terminate the proceeding pursuant to
`
`35 U.S.C. § 317.
`
`Generally, the Board expects that a proceeding will terminate after the
`
`filing of a settlement agreement. See, e.g., Office Patent Trial Practice
`
`Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). The rule governing
`
`settlement indicates that any agreement between the parties made in
`
`connection with, or in contemplation of, the termination of a proceeding
`
`shall be in writing and filed with the Board. 37 C.F.R. § 42.74. Based on
`
`the facts of this proceeding, the parties are authorized to file a joint motion
`
`to terminate this proceeding.
`
`The joint motion to terminate must include a brief explanation as to
`
`why termination of the proceeding is appropriate, and also should update the
`
`Board as to the status of any other matters involving the patent at issue. The
`
`parties also must file, as an exhibit, a true copy of their settlement agreement
`
`to terminate the proceeding. A redacted version of the settlement agreement
`
`will not be accepted as a true copy of the settlement agreement. Any request
`
`that the agreement be treated as business confidential information and be
`
`kept separate from the file of the involved patent must be filed with the
`
`settlement agreement. 37 C.F.R. § 42.74(c). The parties are directed to
`
`FAQ G2 on the Board’s website page at http://www.uspto.gov/patents-
`
`application-process/patent-trial-and-appeal-board/ptab-e2e-frequently-
`
`asked-questions for instructions on how to file their settlement agreement as
`
`confidential (e.g., uploading as “Parties and Board Only”) in PTAB E2E.
`
`
`
`2
`
`
`
`PGR2017-00010
`Patent 9,326,381 B2
`
`The joint motion to terminate and the settlement agreement shall be
`
`filed no later than February 9, 2018. Accordingly, it is
`
`ORDERED that the parties are authorized to file a joint motion to
`
`terminate the proceeding;
`
`FURTHER ORDERED that the joint motion is due no later than
`
`February 9, 2018;
`
`FURTHER ORDERED that the joint motion shall be accompanied by
`
`a true copy of the settlement agreement as required by 37 C.F.R. § 42.74(b);
`
`FURTHER ORDERED that the parties may request that the
`
`settlement agreement be treated as business confidential information as
`
`specified by 37 C.F.R. § 42.74(c); and
`
`FURTHER ORDERED that any confidential settlement agreement
`
`must be filed electronically in accordance with the instructions provided on
`
`the Board’s website (e.g., uploading as “Parties and Board Only”).
`
`3
`
`
`
`PGR2017-00010
`Patent 9,326,381 B2
`
`FOR PETITIONER:
`
`Michael Houston
`Nicholas M. Lagerwall
`FOLEY & LARDNER LLP
`mhouston@foley.com
`nlagerwall@foley.com
`
`
`
`FOR PATENT OWNER:
`
`Hosang Lee
`Alexander P. Ott
`MCDERMOTT WILL & EMERY
`hlee@mwe.com
`aott@mwe.com
`
`
`
`
`
`4
`
`
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