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`571-272-7822
`Date Entered: May 25, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERCIA, INC.,
`Petitioner,
`
`v.
`
`PARTHENON UNIFIED MEMORY ARCHITECTURE LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01944
`Patent 5,812,789
`____________
`
`
`
`
`
`Before MICHAEL R. ZECHER, JAMES B. ARPIN, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`
`DECISION
`Termination of Trial
`35 U.S.C. § 317 and 37 C.F.R. § 42.72
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`IPR2015-01944
`Patent 5,812,789
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`I. DISCUSSION
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`On May 24, 2016, the parties filed a Joint Motion to Terminate this
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`proceeding (Paper 9), a true copy of the parties’ settlement agreement (Ex. 1041),
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`and a request to treat the settlement agreement as business confidential information
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`under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (Paper 10).
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`The trial is still in its preliminary stages. On March 30, 2016, we entered a
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`decision instituting an inter partes review of claims 1, 3–6, 11, and 13 (“all
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`challenged claims”) of U.S. Patent No. 5,812,789 (Ex. 1001, “the ’789 patent”).
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`Paper 7. Although we have instituted a trial, Patent Owner, Parthenon Unified
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`Memory Architecture LLC, has not filed a response to the Petition, nor has
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`Petitioner, Samsung Electronics Company, Ltd. and Samsung Electronics America,
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`Inc., filed a reply.
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`In the Joint Motion to Terminate this proceeding, the parties indicate that
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`they have settled their disputes regarding the ’789 patent. Paper 9, 2. The parties
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`represent that the ’789 patent was asserted against multiple companies in the
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`United States District Court for the Eastern District of Texas. Id. at 2–3. The
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`parties also represent that the ’789 patent is involved in Cases IPR2016-00664,
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`IPR2016-00847, and IPR2016-00923, each of which includes a Motion for Joinder
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`to this proceeding that is pending. Id. at 3.
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`We note, however, that the time period for filing the Patent Owner
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`Preliminary Responses in Cases IPR2016-00664, IPR2016-00847, and IPR2016-
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`00923 has yet to expire and these cases have yet to be joined to this proceeding.
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`Motions for Joinder in these cases do not, and should not, act as an automatic stay
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`of this proceeding. Based on the settlement reached by the parties to this
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`proceeding, the trial is now ready to be terminated. Consequently, we determine
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`IPR2015-01944
`Patent 5,812,789
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`that it is appropriate to terminate the trial without rendering any further decisions.
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`See 37 C.F.R. § 42.72.
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`In consideration of the foregoing, it is hereby:
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`II. ORDER
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`ORDERED that the parties’ request to treat the settlement agreement
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`(Ex. 1041) as business confidential information under 35 U.S.C. § 317(b) and 37
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`C.F.R. § 42.74(c) is GRANTED; and
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`FURTHER ORDERED that the Joint Motion to Terminate this proceeding is
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`GRANTED, and this proceeding is hereby terminated.
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`IPR2015-01944
`Patent 5,812,789
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`For PETITIONER:
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`Allan M. Soobert
`Naveen Modi
`PAUL HASTINGS LLP
`Samsung-PUMA-IPR@paulhastings.com
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`
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`For PATENT OWNER:
`
`Massod Anjom
`Alisa Lipski
`AHMAD, ZAVITSANOS, ANAIPAKOS, ALAVI & MENSING P.C.
`manjom@azalaw.com
`alipski@azalaw.com
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