`571-272-7822
`
` Paper 11
`
`
`Entered: August 25, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SK HYNIX INC., SK HYNIX AMERICA INC.,
`SK HYNIX MEMORY SOLUTIONS INC., and
`HYNIX SEMICONDUCTOR MANUFACTURING AMERICA INC.,
`Petitioner,
`
`v.
`
`DSS TECHNOLOGY MANAGEMENT, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00192
`Patent 6,784,552 B2
`
`
`
`Before BRYAN F. MOORE, BRIAN J. McNAMARA, and
`MINN CHUNG, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`ORDER AUTHORIZING FILING OF MOTION TO TERMINATE
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2016-00192
`Patent 6,784,552 B2
`
`
`
`In an e-mail correspondence on August 24, 2016, the parties advised
`the Board that a settlement agreement had been reached in the current inter
`partes review of U.S. Patent No. 6,784,552 B2 (the subject patent) and
`requested authorization to file a Motion to Terminate the matter. The parties
`may agree to settle any issue in a proceeding pursuant to a written
`agreement, a copy of which shall be filed with the Board before termination
`of the trial. 37 C.F.R. § 42.74(a)-(b). Any agreement or understanding
`between the patent owner and a petitioner, including any collateral
`agreements referred to in such agreement or understanding made in
`connection with, or in contemplation of, the termination of an inter partes
`review shall be in writing and a true copy of such agreement or
`understanding shall be filed in the Office before the termination of such
`review as between the parties. 35 U.S.C. § 317(b).
`A Decision on Institution instituting a trial in this proceeding was
`entered on May 11, 2016. Paper 8. On August 11, 2016, a Patent Owner’s
`Response was filed, which stated that the parties are engaged in settlement
`negotiations and that, in anticipation of expected settlement, Patent Owner
`has foregone deposition of Petitioner’s expert witness and is not submitting
`substantive arguments against the grounds for invalidity asserted by
`Petitioner. Paper 10, 2. Under these circumstances, it may be appropriate to
`enter judgment and terminate the trial without rendering a final written
`decision. 37 C.F.R. § 42.72.
`The parties are authorized to file a Joint Motion To Terminate this
`proceeding. The Joint Motion To Terminate must update the Board
`concerning the status of any litigation or proceeding, including, but not
`
`2
`
`
`
`IPR2016-00192
`Patent 6,784,552 B2
`
`
`
`limited to proceedings in the U.S. Patent and Trademark Office, involving
`the subject patent, and advise the Board whether any litigation or proceeding
`involving the subject patent is contemplated in the foreseeable future. The
`Joint Motion To Terminate also must include a copy of any agreement and
`include a statement certifying that there are no collateral agreements or
`understandings made in connection with, or in contemplation of, the
`termination of the inter partes review. A party to a settlement may request
`that any written agreement be treated as business confidential information
`and be kept separate from the files of an involved patent. 35 U.S.C.
`§ 317(b); 37 C.F.R. § 42.74(c). The request must be filed with the
`settlement agreement. Id.
`It is ORDERED that the parties are authorized to file a Joint Motion
`To Terminate the proceeding and a Joint Request That The Settlement
`Agreement Be Treated As Business Confidential Information.
`
`3
`
`
`
`
`
`
`
`
`
`4
`
`IPR2016-00192
`Patent 6,784,552 B2
`
`
`
`PETITIONER:
`Heath J. Briggs
`Patrick J. McCarthy
`GREENBERG TRAURIG, LLP
`briggsh@gtlaw.com
`mccarthyp@gtlaw.com
`
`PATENT OWNER:
`Andriy Lytvyn
`Anton J. Hopen
`Nicholas Pfeifer
`SMITH & HOPEN, P.A.
`andriy.lytvyn@smithhopen.com
`anton.hopen@smithhopen.com
`nicholas.pfeifer@smithhopen.com
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