`
`
`
`
`
` Paper No. 26
`
`By: Christopher Frerking (chris@ntknet.com)
`
`Reg. No. 42,557
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`LAM RESEARCH CORP.,
`
`Petitioner,
`
`v.
`
`DANIEL L. FLAMM,
`
`Patent Owner.
`
`CASE IPR2015-01764
`U.S. Patent No. RE40,264 E
`
`
`JOINT MOTION TO TERMINATE PROCEEDING IN VIEW OF
`SETTLEMENT PURSUANT TO 35 U.S.C. §317(a),
`
`JOINT NOTICE OF SETTLEMENT PURSUANT TO 35 U.S.C.
`§317(b) AND 37 C.F.R. § 42.74, AND
`
`JOINT REQUEST TO KEEP SEPARATE PURSUANT TO 35 U.S.C.
`§317(b) AND 37 C.F.R. § 42.74(c)
`
`
`
`
`
`
`
`
`
`
`
`
`The Patent Owner, Daniel L. Flamm, and the Petitioner, Lam Research
`
`Corp. (collectively “the Parties”) have entered into a confidential settlement
`
`agreement, Confidential Binding Memorandum of Understanding dated
`
`December 1, 2016 (“MOA”), that resolves all underlying disputes related to
`
`U.S. Patent No. RE40,264 E between the parties, including IPR2015-01764.
`
`The Parties are submitting a copy of the MOA (Exhibit 2009) with the PTAB,
`
`as required by 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74.
`
`Statement of Precise Relief Requested
`
`The Parties jointly request that the Board terminate this Inter Partes
`
`Review (“IPR”) and that the Board treat the MOA as business confidential
`
`information and keep it separate from the file of the involved patent, and made
`
`available only to Federal Government agencies on written request or to any
`
`person only on a showing of good cause.
`
`
`
`Related IPR Proceedings
`
`Related Proceedings
`
`In addition to the instant proceeding, Lam submitted six petitions for inter
`
`partes review of the ‘264 patent, one petition for inter partes review of U.S. Patent
`
`No. 5,711,849 (“the ‘849 patent”), and one petition for inter partes review of U.S.
`
`
`
`
`
`Patent No. 6,017,221 (“the ‘221 patent”).1 In addition, Samsung Electronics Co.,
`
`Ltd. has submitted two petitions for inter partes review of the ‘264 patent, Intel
`
`Corporation has submitted four petitions for inter partes review of the ‘264 patent,
`
`and Micron Technology, Inc. has submitted one petition for inter partes review of
`
`the ‘849 patent and one petition for inter partes review of the ‘221 patent. Each of
`
`these petitions is described below:
`
`IPR Petitions Directed Toward RE40,264
`Petitioner
`Petition No.
`Lam Research Corp.
`IPR2015-01759
`
`Lam Research Corp.
`
`IPR2015-01766
`
`Lam Research Corp.
`
`IPR2015-01768
`
`Lam Research Corp.
`
`IPR2016-0468
`
`Lam Research Corp.
`
`IPR2016-0469
`
`Lam Research Corp.
`
`IPR2016-00470
`
`Samsung Electronics Co.,
`Ltd.
`
`IPR2016-01510
`
`Status
`PTAB denied institution of
`the petition.
`PTAB denied institution of
`the petition.
`Concurrent herewith, the
`Parties are jointly moving
`to terminate the petition
`under 35 U.S.C. § 317(a).
`PTAB denied institution of
`the petition.
`PTAB denied institution of
`the petition.
`PTAB denied institution of
`the petition.
`Dr. Flamm submitted his
`preliminary opposition to
`the petition on November
`25, 2016.
`
`
`1 Dr. Flamm is the inventor or co-inventor of the ‘849 and the ‘221patents and
`currently owns both of those patents. The ‘849 and ‘221 patents are at issue in
`related district court proceedings that are summarized below.
`
`
`
`IPR Petitions Directed Toward RE40,264
`Petitioner
`Petition No.
`Samsung Electronics Co.,
`IPR2016-01512
`Ltd.
`
`Intel Corporation
`
`IPR2017-0279
`
`Intel Corporation
`
`IPR2017-0280
`
`Intel Corporation
`
`IPR2017-0281
`
`Intel Corporation
`
`IPR2017-0282
`
`
`
`
`
`Status
`Dr. Flamm submitted his
`preliminary opposition to
`the petition on November
`25, 2016.
`Intel filed the petition on
`December 2, 2016.
`Intel filed the petition on
`December 2, 2016.
`Intel filed the petition on
`December 2, 2016.
`Intel filed the petition on
`December 2, 2016.
`
`IPR Petitions Directed Toward 5,711,849
`Petitioner
`Petition No.
`Lam Research Corp.
`IPR2016-0466
`
`Micron Technology, Inc.
`
`IPR2017-0392
`
`Micron Technology, Inc.
`
`IPR2017-0406
`
`
`
`IPR Petitions Directed Toward 6,017,221
`Petitioner
`Petition No.
`Lam Research Corp.
`IPR2016-01767
`
`Status
`PTAB denied institution of
`the petition.
`Micron filed the petition on
`December 4, 2016.
`Micron filed the petition on
`December 4, 2016.
`
`Status
`Concurrent herewith, the
`Parties are jointly moving
`to terminate the petition
`under 35 U.S.C. § 317(a).
`Micron filed the petition on
`December 2, 2016.
`
`Micron Technology, Inc.
`
`IPR2017-0391
`
`
`
`Related District Court Proceedings
`
`The ‘264 patent, the ‘849 patent, and the ‘221 patent are at issue in the
`
`following district court actions, all of which are pending in the United States
`
`
`
`
`
`District Court for the Northern District of California:
`
`Case
`Lam Research Corp. v. Daniel L.
`Flamm, 5:15-cv-01277-BLF
`Daniel L. Flamm v.
`GLOBALFOUNDRIES U.S., Inc., 5:16-
`cv-01578-BLF
`Daniel L. Flamm v. Intel Corporation,
`5:16-cv-01579-BLF
`
`Daniel L. Flamm v.Maxim Integrated
`Products, Inc., 5:16-cv-01580-BLF
`
`Daniel L. Flamm v. Micron Technology,
`Inc., 5:16-cv-01581-BLF
`
`Daniel L. Flamm v. Samsung
`Electronics Co., Ltd., Samsung
`Electronics America, Inc., Samsung
`Semiconductor, Inc., and Samsung
`Austin Semiconductor, LLC, 5:16-cv-
`02252-BLF
`
`
`Status
`The case has been voluntarily dismissed
`pursuant to the MOA.
`The case has been stayed pending the
`resolution of this IPR, IPR2015-01768,
`and IPR2015-01767.
`The case has been stayed pending the
`resolution of this IPR, IPR2015-01768,
`and IPR2015-01767.
`The case has been stayed pending the
`resolution of this IPR, IPR2015-01768,
`and IPR2015-01767.
`The case has been stayed pending the
`resolution of this IPR, IPR2015-01768,
`and IPR2015-01767.
`The case has been stayed pending the
`resolution of this IPR, IPR2015-01768,
`and IPR2015-01767.
`
`
`
`Argument for Termination
`
`Public Policy favors terminating the present inter partes review proceeding.
`
`Congress and federal courts have expressed a strong interest in encouraging
`
`settlement in litigation. See, e.g., Delta Air Lines, Inc. v. August, 450 U.S. 346,
`
`352 (1981) (“The purpose of [Fed. R. Civ. P.] 68 is to encourage the settlement of
`
`litigation.”); Bergh v. Dept. of Transp., 794 F.2d 1575, 1577 (Fed. Cir. 1986)
`
`(“The law favors settlement of cases.”), cert. denied, 479 U.S. 950 (1986). The
`
`Federal Circuit places a particularly strong emphasis on settlement. See Cheyenne
`
`
`
`
`
`River Sioux Tribe v. U.S., 806 F.2d 1046, 1050 (Fed. Cir. 1986) (noting that the
`
`law favors settlement to reduce antagonism and hostility between parties). And,
`
`the Board’s Trial Practice Guide stresses that “[t]here are strong public policy
`
`reasons to favor settlement between the parties to a proceeding.” Office Patent
`
`Trial Practice Guide, 77 Fed. Reg. 48,756, 46,768 (Aug. 14, 2012).
`
`The Parties have resolved their dispute relating to the ‘264 patent, and ‘849
`
`patent, and the’221 patent. Because the Board has not decided this IPR on its
`
`merits, the Parties jointly request that the Board terminate this IPR pursuant to 35
`
`U.S.C. §317(a) and 37 C.F.R. § 42.74.
`
`Request to Treat MOA as Confidential
`
`The Parties are filing the MOA (Exhibit 2009) with the Board as required
`
`by 35 U.S.C. § 317(b), and have designated the “availability” of the MOA in the
`
`PTAB E2E system as “Parties and Board Only.” Because the MOA (Exhibit
`
`2009) contains confidential business information, Petitioner and Patent Owner
`
`jointly request that the Office treat the MOA (Exhibit 2009) as business
`
`confidential information, that the MOA be kept separate from the file of the
`
`involved patent (for example, that the MOA not be accessible through the public
`
`Patent Application Information Retrieval system, nor through the PTAB Patent
`
`Review Processing System), pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. §
`
`
`
`
`
`42.70(c), and that the MOA be made available only to Federal Government
`
`agencies on written request, or to any person on a showing of good cause.
`
`Conclusion
`
`For the foregoing reasons, Petitioner and Patent Owner request that the
`
`Board terminate this proceeding and treat the MOA (Exhibit 2009) as business
`
`confidential information whereby the MOA is kept separate from the file of the
`
`involved patent.
`
`
`
`
`
`Date: December 6, 2016
`
`
`
`By: /Michael Fleming/
`Michael Fleming (Reg. No. 67,933)
`Samuel K. Lu, (Reg. No.40,707)
`Kamran Vakili (Reg. No.64,825)
`Morgan Chu (pro hac vice)
`Talin Gordnia (pro hac vice)
`IRELL & MANELLA LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, California 90067-4276
`Tel: (310) 277-1010
`Email: mfleming@irell.com;
`slu@irell.com; mchu@irell.com;
`tgordnia@irell.com
`
`Counsel for Petitioner Lam Research
`Corp.
`
`
`
`
`
`Respectfully Submitted,
`
`
`
`
`By: /Christopher Frerking/
`Christopher Frerking, reg. no. 42,557
`174 Rumford Street
`Concord, New Hampshire 03301
`Tel: (603) 706-3127
`Email: chris@ntknet.com
`
`George Summerfield (pro hac vice)
`STADHEIM & GREAR, LTD.
`400 N. Michigan Ave., Suite 2200
`Chicago, Illinois 60611
`Tel: (312) 755-4400
`Email:
`summerfield@stadheimgrear.com
`
`Counsel for Patent Owner Daniel L.
`Flamm
`
`
`
`
`
`
`EXHIBIT APPENDIX
`
`
`
`Exhibit
`2009
`
`
`Confidential Memorandum of Understanding dated December 1,
`2016
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the foregoing JOINT MOTION TO
`
`TERMINATE PROCEEDING IN VIEW OF SETTLEMENT PURSUANT
`
`TO 35 U.S.C. § 317(a); JOINT NOTICE OF SETTLEMENT PURSUANT TO
`
`35 U.S.C. § 317(b) AND 37 C.F.R. § 42.74; and JOINT REQUEST TO KEEP
`
`SEPARATE PURSUANT TO 35 U.S.C. § 317(b) AND 37 C.F.R. § 42.74(c)
`
`was served by electronic mail on this day, December 6, 2016, on the following
`
`individuals:
`
`Michael Fleming
`(mfleming@irell.com)
`Samuel K. Lu
`(slu@irell.com)
`Kamran Vakili
`(kvakili@irell.com)
`Morgan Chu
`(mchu@irell.com)
`IRELL & MANELLA LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, CA 90067-4276
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/ Beata Ichou
`Beata Ichou
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
