`Trials@uspto.gov
`571-272-7822
`Entered: August 23, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HTC CORPORATION, HTC AMERICA, INC., and
`LG ELECTRONICS, 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.
`
`
`
`
`
`DECISION
`Termination of the Proceeding Only as to LG Electronics, Inc.
`37 C.F.R. §§ 42.72 and 42.74
`
`
`
`
`
`
`
`1 This Decision addresses issues pertaining to all three proceedings. Therefore, we
`exercise our discretion to issue one Decision to be filed in each proceeding. The
`parties are not authorized to use this style heading for any subsequent papers.
`
`
`
`IPR2015-01500 (Patent 7,321,368 B2)
`IPR2015-01501 (Patent 7,777,753 B2)
`IPR2015-01502 (Patent 7,542,045 B2)
`
`
`
`I. DISCUSSION
`On August 15, 2016, Petitioner entity, LG Electronics, Incorporated (“LG”),
`and Patent Owner, Parthenon Unified Memory Architecture Limited Liability
`Corporation (“Parthenon”), filed a Joint Motion to Terminate these proceedings
`only as to LG (IPR2015-01500, Paper 35; IPR2015-01501, Paper 35; IPR2015-
`01502, Paper 35), a true copy of the settlement agreement (IPR2015-01500, Ex.
`2012; IPR2015-01501, Ex. 2012; IPR2015-01502 Ex. 2012), and a request to treat
`the settlement agreement as business confidential information under 35 U.S.C.
`§ 317(b) and 37 C.F.R. § 42.74(c) (IPR2015-01500, Paper 41; IPR2015-01501,
`Paper 41; IPR2015-01502, Paper 41).
`This proceeding is still in its preliminary stages. On April 7, 2016, LG,
`along with remaining Petitioner entities, HTC Corporation and HTC America,
`Incorporated (collectively, “HTC”), filed a Petition requesting an inter partes
`review of claims 1, 3–6, 11, and 13 of U.S. Patent No. 5,812,789 (Ex. 1001, “the
`’789 patent”). Paper 1. Parthenon waived its right to file a Preliminary Response
`in this proceeding. Paper 9. We have not entered a decision whether or not to
`institute an inter partes review.
`In the Joint Motion to Terminate this proceeding only as to LG, LG and
`Parthenon represent that they have settled their disputes regarding the ’789 patent.
`Paper 13, 2. LG and Parthenon further represent that the ’789 patent was asserted
`against multiple companies in the United States District Court for the Eastern
`District of Texas. Id. at 2–3. In addition to this proceeding, LG and Parthenon
`represent that they are parties in the following proceedings before the Board:
`(1) Case IPR2015-01500; (2) Case IPR2015-01501; (3) Case IPR2015-01502; and
`(4) Case IPR2016-00848. Id. at 3. According to LG and Parthenon, they are in the
`
`
`
`2
`
`
`
`IPR2015-01500 (Patent 7,321,368 B2)
`IPR2015-01501 (Patent 7,777,753 B2)
`IPR2015-01502 (Patent 7,542,045 B2)
`
`
`process of filing a Joint Motion to Terminate in each of these proceedings. Id.
`Lastly, LG and Parthenon represent that the ’789 patent remains at issue in the
`following proceedings before the Board: (1) Case IPR2016-00664; (2) Case
`IPR2016-00923; and (3) Case IPR2016-01135. Id. Under these particular
`circumstances, we determine that it is appropriate to terminate this proceeding only
`as to LG. See 37 C.F.R. § 42.72.
`
`
`II. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that LG’s and Parthenon’s joint request to treat the settlement
`agreement (Ex. 2001) as business confidential information under 35 U.S.C.
`§ 317(b) and 37 C.F.R. § 42.74(c) is granted;
`FURTHER ORDERED that the Joint Motion to Terminate this proceeding
`only as to LG is granted, and LG may no longer participate as a party in this
`proceeding; and
`FURTHER ORDERED that HTC and Parthenon will continue to participate
`in this proceeding as adversarial parties.
`
`
`
`
`
`3
`
`
`
`IPR2015-01500 (Patent 7,321,368 B2)
`IPR2015-01501 (Patent 7,777,753 B2)
`IPR2015-01502 (Patent 7,542,045 B2)
`
`
`For PETITIONER:
`Joseph A. Micallef
`Samuel A. Dillon
`SIDLEY AUSTIN LLP
`jmicallef@sidley.com
`samuel.dillon@sidley.com
`
`Rajeev Gupta
`Joshua Goldberg
`Michael V. Young
`Elizabeth Niemeyer
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`Raj.gupta@finnegan.com
`LGE-CCE-IPR@finnegan.com
`Michael.Young@finnegan.com
`Elizabeth.Niemeyer@finnegan.com
`
`For PATENT OWNER:
`
`Masood Anjom
`Scott Clark
`AHMAD, ZAVITSANOS, ANAIPAKOS, ALAVI & MENSING P.C.
`manjom@azalaw.com
`sclark@azalaw.com
`
`
`
`
`
`4
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