Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 28
`Entered: June 9, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`HTC CORPORATION,
`HTC AMERICA, INC.,
`LG ELECTRONICS, INC.,
`SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`PARTHENON UNIFIED MEMORY ARCHITECTURE LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01500 (Patent 7,321,368 B2)
`Case IPR2015-01501 (Patent 7,777,753 B2)
`Case IPR2015-01502 (Patent 7,542,045 B2)1
`____________
`
`
`
`Before JAMES B. ARPIN, MATTHEW R. CLEMENTS, and
`SUSAN L. C. MITCHELL, Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`
`TERMINATION
`Termination of Proceedings Only As To Samsung Electronics Co., Ltd., and
`Samsung Electronics America, Inc.
` 37 C.F.R. § 42.72
`
`
`1 The parties are not authorized to use a multiple proceeding caption. They must
`file individual papers separately in each proceeding to which they pertain.
`
`

`
`IPR2015-01500 (Patent 7,321,368 B2)
`IPR2015-01501 (Patent 7,777,753 B2)
`IPR2015-01502 (Patent 7,542,045 B2)
`
`
`On May 24, 2016, Patent Owner and two Petitioners, Samsung Electronics
`Co., Ltd., and Samsung Electronics America, Inc. (the “Samsung Petitioners”),2
`filed Joint Motions (Papers 25)3 to terminate the above-captioned inter partes
`reviews with respect to the Samsung Petitioners only and Joint Requests to treat
`the settlement agreements (Exhibits 1031) filed in each proceeding, as business
`confidential information (Papers 26), to be kept separate from the patent files. See
`35 U.S.C. § 317(a) and (b); 37 C.F.R. §§ 42.72, 42.74. Patent Owner and the
`Samsung Petitioners stated in the joint motion that:
`The Parties have settled their disputes and executed a settlement
`agreement to terminate this proceeding, as well as the Parties’ related
`district court litigation regarding the [challenged] Patent: Parthenon
`Unified Memory Architecture LLC v. Samsung Electronics Co., Ltd. et
`al., Case Number 2:14-cv-00902 (E.D. Tex.). The district court
`litigation was dismissed with prejudice on May 20, 2016.
` Paper 25, 2. Further, Patent Owner and the Samsung Petitioners identified four
`district court litigations involving the patents challenged in the captioned reviews,
`in which Patent Owner asserts these patents against the remaining Petitioners, as
`well as ZTE (TX) Inc., ZTE Corporation, and ZTE USA, Inc.4 Id. at 2–3. The
`parties indicate that no other litigation or proceeding involving these patents is
`contemplated in the foreseeable future. Id. at 3.
`
`
`2 The remaining Petitioners are HTC Corporation; HTC America, Inc.; and LG
`Electronics, Inc.
`3 Except where a particular proceeding is identified, the same paper and exhibit
`numbers are applicable to each of the captioned proceedings. The citations refer to
`the papers and exhibits filed in each proceeding.
`4 Petitioners do not identify ZTE (TX) Inc., ZTE Corporation, or ZTE USA, Inc. as
`a privy or a real party-in-interest in any of the captioned proceedings. See, e.g.,
`IPR2015-01501, Paper 1, 2.
`
`
`
`2
`
`

`
`IPR2015-01500 (Patent 7,321,368 B2)
`IPR2015-01501 (Patent 7,777,753 B2)
`IPR2015-01502 (Patent 7,542,045 B2)
`
`
`In addition, Patent Owner and the Samsung Petitioners also identify two
`other inter partes reviews to which they are parties: IPR2015-01944 (terminated)
`and IPR2015-01946 (terminated). Moreover, ZTE USA, Inc. has filed petitions for
`inter partes review challenging the patents challenged in these proceedings:
`IPR2016-00666 (U.S. Patent No. 7,321,368 B2), IPR2016-00667 (U.S. Patent No.
`7,542,045 B2), and IPR2016-00670 (U.S. Patent No. 7,777,753 B2). Id.
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this
`chapter shall be terminated with respect to any petitioner upon the joint request of
`the petitioner and patent owner, unless the Office has decided the merits of the
`proceeding before the request for termination is filed.” The Board instituted a trial
`in each of these proceedings on January 6, 2016, (IPR2015-01500, Paper 14;
`IPR2015-01501, Paper 12; IPR2015-01502, Paper 14), but has not decided the
`merits of any of the proceedings.
`Further, under 37 C.F.R. § 42.74(b), “[a]ny agreement or understanding
`between the parties made in connection with, or in contemplation of, the
`termination of a proceeding shall be in writing and a true copy shall be filed with
`the Board before termination of the trial.” See also 37 C.F.R. §§ 42.72; 42.73(a).
`In the Joint Motions, the parties represent that the district court litigation involving
`Patent Owner and the Samsung Petitioners has been dismissed with prejudice
`(Paper 25, 2), and that a true copy of the settlement agreement between Patent
`Owner and the Samsung Petitioners has been filed in each proceeding (id. at 3–4
`(citing Ex. 1031)). Moreover, the parties represent that “[t]here are no collateral
`agreements or understandings made in connection with, or in contemplation of, the
`termination of the inter partes review.” Id. at 4. In view of the representations set
`forth in the Joint Motions, we determine that it is appropriate to terminate these
`
`
`
`3
`
`

`
`IPR2015-01500 (Patent 7,321,368 B2)
`IPR2015-01501 (Patent 7,777,753 B2)
`IPR2015-01502 (Patent 7,542,045 B2)
`
`proceedings with respect to the Samsung Petitioners prior to rendering final written
`decisions. See 37 C.F.R. §§ 42.72, 42.73(a).
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Joint Motions of Patent Owner and the Samsung
`Petitioners to terminate these proceedings only with respect to the Samsung
`Petitioners are granted;
` FURTHER ORDERED that the Joint Requests of Patent Owner and the
`Samsung Petitioners to treat the settlement agreements as business confidential
`information to be kept separate from the patent files are granted; and
`FURTHER ORDERED that these proceedings hereby are terminated only
`with respect to the Samsung Petitioners.
`
`
`
`
`
`4
`
`

`
`IPR2015-01500 (Patent 7,321,368 B2)
`IPR2015-01501 (Patent 7,777,753 B2)
`IPR2015-01502 (Patent 7,542,045 B2)
`
`For PETITIONER:
`
`Allan M. Soobert
`Naveen Modi
`PAUL HASTINGS LLP
`Samsung-PUMA-IPR@paulhastings.com
`
`Rajeev Gupta
`Darren M. Jiron
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`LGE_Finnegan_PUMAIPR@finnegan.com
`
`Joseph A. Micallef
`Stephen M. Everett
`SIDLEY AUSTIN LLP
`jmicallef@sidley.com
`stephen.everett@sidley.com
`
`For PATENT OWNER:
`
`Masood Anjom
`Alisa Lipski
`AHMAD, ZAVITSANOS, ANAIPAKOS, ALAVI & MENSING P.C.
`manjom@azalaw.com
`alipski@azalaw.com
`
`
`
`
`
`
`
`5