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`Reg. No. 42,557
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` Paper No. 24
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`
`
`
`
`
`
`LAM RESEARCH CORP.,
`
`Petitioner,
`
`v.
`
`DANIEL L. FLAMM,
`
`Patent Owner.
`
`CASE IPR2015-01768
`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 IPR2015-01768. 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.
`
`IPR2015-01764
`
`Lam Research Corp.
`
`IPR2015-01766
`
`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.
`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.
`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, IPR2015-01764,
`and IPR2015-01767.
`The case has been stayed pending the
`resolution of this IPR, IPR2015-01764,
`and IPR2015-01767.
`The case has been stayed pending the
`resolution of this IPR, IPR2015-01764,
`and IPR2015-01767.
`The case has been stayed pending the
`resolution of this IPR, IPR2015-01764,
`and IPR2015-01767.
`The case has been stayed pending the
`resolution of this IPR, IPR2015-01764,
`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
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`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
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`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
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`involved patent (for example, that the MOA not be accessible through the public
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`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. §
`
`
`
`
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`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.
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`Conclusion
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`For the foregoing reasons, Petitioner and Patent Owner request that the
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`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
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`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