Paper: 25
`
` Entered: December 15, 2016
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`LAM RESEARCH CORP.,
`Petitioner,
`
`v.
`
`DANIEL L. FLAMM,
`Patent Owner.
`
`____________
`
`Cases: IPR2015-01764 (Patent No. RE40,264)
`IPR2015-01767 (Patent No. 6,017,221)
`IPR2015-01768 (Patent No. RE40,264)
`____________
`
`
`Before CHRISTOPHER L. CRUMBLEY, JO-ANNE M. KOKOSKI, and
`KIMBERLY McGRAW, Administrative Patent Judges.
`
`CRUMBLEY, Administrative Patent Judge.
`
`
`JUDGMENT
`Termination of the Proceeding
`37 C.F.R. § 42.72
`
`
`
`On December 6, 2016, Petitioner Lam Research Corp. and Patent
`Owner Daniel L. Flamm filed Joint Motions to Terminate these three related
`
`
`
` Entered: December 15, 2016
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`LAM RESEARCH CORP.,
`Petitioner,
`
`v.
`
`DANIEL L. FLAMM,
`Patent Owner.
`
`____________
`
`Cases: IPR2015-01764 (Patent No. RE40,264)
`IPR2015-01767 (Patent No. 6,017,221)
`IPR2015-01768 (Patent No. RE40,264)
`____________
`
`
`Before CHRISTOPHER L. CRUMBLEY, JO-ANNE M. KOKOSKI, and
`KIMBERLY McGRAW, Administrative Patent Judges.
`
`CRUMBLEY, Administrative Patent Judge.
`
`
`JUDGMENT
`Termination of the Proceeding
`37 C.F.R. § 42.72
`
`
`
`On December 6, 2016, Petitioner Lam Research Corp. and Patent
`Owner Daniel L. Flamm filed Joint Motions to Terminate these three related
`
`
`
`IPR2015-01764 (Patent No. RE40,264)
`IPR2015-01767 (Patent No. 6,017,211)
`IPR2015-01768 (Patent No. RE40,264)
`
`inter partes review trials. Paper 26,1 “Mot.” With the Joint Motions, the
`parties filed a copy of a Binding Memorandum of Understanding covering
`various matters, including those involving the patents at issue in these
`proceedings. Ex. 2009. As part of their Joint Motions, the parties requested
`that the Board treat the Memorandum of Understanding as confidential
`business information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`Mot. 6–7.2
`We note that neither party sought authorization to file the Joint
`Motions, as required by the Board’s Rules. See 37 C.F.R. § 42.20(b). To
`discuss this failure, as well as the status of the copending District Court
`actions and related inter partes reviews, the panel convened a conference
`call with the parties on December 12, 2016. The panel also requested that,
`prior to the call, the parties provide a more detailed summary of the related
`pending proceedings. A copy of the submitted summary will be entered as
`Exhibit 3001.
`On December 7, 2016, counsel for Samsung Electronics Co., Ltd.
`contacted the Board, seeking authorization to file a response to the Joint
`Motions to Terminate. Samsung is petitioner in two of the related inter
`partes review proceedings challenging U.S. Patent No. RE40,264, namely
`IPR2016-01510 and IPR2016-01512. The Board granted Samsung
`permission to attend the conference call with the parties on December 12,
`2016, but did not authorize the filing of a response to the Joint Motions.
`
`1 Similar Joint Motions were filed in each of the three cases; citations herein
`are to the record in IPR2015-01764.
`2 The pages of the Motions are not numbered. We have cited to the page of
`the document, starting with the title page.
`
`
`
`2
`
`
`
`IPR2015-01764 (Patent No. RE40,264)
`IPR2015-01767 (Patent No. 6,017,211)
`IPR2015-01768 (Patent No. RE40,264)
`
`
`During the call, counsel for Flamm attempted to justify the failure to
`seek authorization to file the Joint Motions by noting the late stage of the
`proceedings and the desire to file the Joint Motions before the Board
`rendered a final written decision. We explained that this was not sufficient
`justification for failure to follow the Board’s Rules, and that a request by the
`parties for authorization to file likewise would have put the Board on notice
`of the settlement. This time only, and due to the particular circumstances of
`this proceeding, we excused the failure to request authorization, and
`accepted filing of the Joint Motions.
`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.” In these
`proceedings, the Board has not yet reached a decision on the merits with
`respect to the patentability of any involved claim. Accordingly, we must
`terminate the review with respect to Petitioner Lam.
`Section 317(a) also provides that, “[i]f no petitioner remains in the
`inter partes review, the Office may terminate the review or proceed to a final
`written decision under section 318(a).” 35 U.S.C. § 317(a). The Board,
`therefore, has discretion to terminate these reviews with respect to Flamm.
`In their Joint Motions, the parties assert that they have resolved all
`disputes between them relating to the two patents at issue in these
`proceedings. Mot. 6. The parties also contend that public policy favors
`termination of the proceedings, as it will encourage settlement between
`parties to litigation. Id. at 5–6.
`
`
`
`3
`
`
`
`IPR2015-01764 (Patent No. RE40,264)
`IPR2015-01767 (Patent No. 6,017,211)
`IPR2015-01768 (Patent No. RE40,264)
`
`
`During the conference call with the parties, we noted the extremely
`advanced nature of these inter partes review trials. The parties completed
`all briefing, the Board held oral hearings, and the statutory deadline for
`rendering final written decisions is approximately two months away. While
`termination of the proceeding at this stage may conserve some judicial
`resources, we cannot ignore the fact that substantial resources–both on the
`part of the Board, as well as the parties–have been invested in this matter.
`Rather than waste these expended resources, it would not be unreasonable at
`this point to proceed to final written decisions, thereby providing the parties
`and the public with certainty on the grounds of unpatentability pending in
`these trials.
`Counsel for Flamm argued that the Board should avoid setting a per
`se rule that would prevent settlement after oral hearing, as future patent
`owners would have no incentive to discuss settlement after the hearing.
`While we agree that a per se rule is not warranted, the stage of the
`proceedings is a factor to be weighed in determining whether termination
`favors the public interest. Doing so will encourage parties to discuss
`settlement early, and not wait until the parties and Board have invested
`substantial resources in resolving the dispute.
`Counsel for Samsung argued that termination as to Flamm would not
`be in the public interest, as there are several other pending inter partes
`review proceedings on the challenged patents, in addition to the ongoing
`District Court actions. Upon questioning by the Board, however, counsel
`agreed that the grounds of unpatentability asserted in these other
`proceedings differ from those instituted here, and any decision in these
`
`
`
`4
`
`
`
`IPR2015-01764 (Patent No. RE40,264)
`IPR2015-01767 (Patent No. 6,017,211)
`IPR2015-01768 (Patent No. RE40,264)
`
`proceedings would not entirely resolve the other challenges.3 Furthermore,
`many of the other proceedings involve claims not challenged in these
`proceedings. While final written decisions in these proceedings may narrow
`the issues in the other proceedings, we must weigh the fact that such
`narrowing will be partial, and is speculative at this point.
`Having weighed these and other relevant factors, we determine that
`termination with respect to Flamm is appropriate. As noted above, there are
`several other pending inter partes review petitions involving the challenged
`patents and related patents, which cover all of the claims at issue in these
`trials as well as other claims. See IPR2016-01510, IPR2016-01512,
`IPR2017-00279, IPR2017-00280, IPR2017-00281, IPR2017-00282,
`IPR2017-00391, IPR2017-00392, IPR2017-00406. We consider it
`significant that many of the remaining parties sued for infringement of the
`challenged patents are petitioners in those pending inter partes review
`proceedings, and will have the opportunity to challenge the patents there, as
`well as in the District Court actions.
`For these reasons, we determine that it is appropriate to terminate
`these inter partes reviews as to both Lam and Flamm without rendering final
`written decisions. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72.
`
`
`
`3 For example, Samsung and the other defendants have agreed to estoppel in
`the District Court actions, but only for grounds of unpatentability that were
`actually decided by the Board in a final written decision. Ex. 3001, 19.
`
`
`
`5
`
`
`
`IPR2015-01764 (Patent No. RE40,264)
`IPR2015-01767 (Patent No. 6,017,211)
`IPR2015-01768 (Patent No. RE40,264)
`
`In light of the foregoing, it is
`ORDERED that the Joint Motions to Terminate these proceedings
`(IPR2015-01764, Paper 28; IPR2015-01767, Paper 36; IPR2015-01768,
`Paper 24) are granted;
`FURTHER ORDERED that the parties’ requests, made as part of the
`Motions to Terminate, to have their Binding Memorandum of Understanding
`(IPR2015-01764, Ex. 2009; IPR2015-01767, Ex. 2004; IPR2015-01768, Ex.
`2009) treated as business confidential information, to be kept separate from
`the patent file, are granted; and
`FURTHER ORDERED that these inter partes reviews are hereby
`terminated.
`
`6
`
`
`
`
`
`
`
`IPR2015-01764 (Patent No. RE40,264)
`IPR2015-01767 (Patent No. 6,017,211)
`IPR2015-01768 (Patent No. RE40,264)
`
`PETITIONER:
`Michael R. Fleming
`Samuel K. Lu
`Kamran Vakili
`IRELL & MANELLA LLP
`MFleming@irell.com
`SLu@irell.com
`KVakili@irell.com
`LamFlammIPR@irell.com
`
`PATENT OWNER:
`Christopher Frerking
`chris@ntknet.com
`
`
`
`
`7
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