`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`
`
` Paper 32
`
`
` Entered: November 27, 2013
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`INNOLUX CORPORATION
`Petitioner
`
`v.
`
`SEMICONDUCTOR ENERGY
`LABORATORY CO., LTD.
`Patent OWNER
`____________
`
`Cases IPR2013-00028 (Patent 6,404,480)
`IPR2013-00038 (Patent 7,956,978)
`IPR2013-00060 (Patent 7,697,102)
`IPR2013-00064 (Patent 7,923,311)
`IPR2013-00065 (Patent 7,923,311)
`IPR2013-00066 (Patent 7,876,413)
`IPR2013-00068 (Patent 8,068,204)1
`____________
`
`Before SALLY C. MEDLEY, KARL D. EASTHOM, and KEVIN F.
`TURNER Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`1 This order addresses a similar issue in the seven cases. Therefore, we
`exercise discretion to issue one order to be filed in each case. The parties,
`however, are not authorized to use this style of heading in subsequent
`papers.
`
`
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
` 37 C.F.R. § 42.5
`
`On November 26, 2013, a conference call was held between counsel
`for the respective parties and Judges Medley, Easthom and Turner.
`The purpose of the conference call was to discuss a settlement
`agreement entered into by the parties. Counsel explained that the parties
`have a written settlement and licensing agreement which contemplates the
`termination of the inter partes review proceedings, along with the
`termination of the related litigation.
`
`An inter partes review has been instituted in each of the seven cases.
`The Board does not have before it full briefing on the issues raised during
`each of the seven trials. Moreover, the Board has not entered a final written
`decision. 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. 48756, 48768 (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 proceeding2
`shall be in writing and filed with the Board. 37 C.F.R. § 42.74.
`Based on the facts of these proceedings, the parties are authorized to,
`and shall file, in addition to the settlement agreement, a joint motion to
`terminate the proceeding briefly explaining why termination is appropriate
`in these cases. As explained, the parties also must file, as an exhibit, a true
`copy of their settlement agreement to terminate the proceedings. Any
`request that the agreement be treated as business confidential information
`
`
`2 A “proceeding” includes a preliminary proceeding. 37 C.F.R. § 42.2.
`
`2
`
`
`
`and be kept separate from the files of the involved patent must be filed with
`the settlement agreement. 37 C.F.R. § 42.74(c). The parties are directed to
`FAQ G3 on the Board’s website page at
`http://www.uspto.gov/ip/boards/bpai/prps.jsp for instructions on how to file
`their settlement agreement as confidential (e.g., uploading as “Parties and
`Board Only”).
`Counsel agreed to file the joint motion to terminate each proceeding
`and the settlement agreement by close of business Wednesday, December 4,
`2013.
`
`Accordingly, it is
`ORDERED that the parties are authorized to file a separate joint
`motion to terminate in each of the seven proceedings;
`FURTHER ORDERED that the joint motions are due December 4,
`2013; and
`FURTHER ORDERED that the joint motions 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);
`FURTHER ORDERED that any confidential settlement agreement
`must be filed electronically in each of the seven proceedings via the Patent
`Review Processing System (PRPS) in accordance with the instructions
`provided on the Board’s website (e.g., uploading as “Parties and Board
`Only”); and
`FURTHER ORDERED that the remaining DUE DATES in each of
`the seven proceedings are vacated.
`
`3
`
`
`
`
`
`PETITIONER:
`
`Scott McKeown
`CPdocketMcKeown@oblon.com
`
`Gregory S. Cordrey
`gcordrey@jmbm.com
`
`
`
`PATENT OWNER:
`
`Mark J. Murphy
`Edward D. Manzo
`HUSCH BLACKWELL
`Mark.murphy@huschblackwell.com
`Edward.manzo@huschblackwell.com
`
`Stanly A. Schlitter
`Douglas R. Peterson
`STEPTOE & JOHNSON
`Sschlitt&Steptoe.com
`dpeterson@steptoe.com
`
`4
`
`
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