Paper No. 12
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SK hynix Inc., SK hynix America Inc., SK hynix memory solutions Inc., and
`Hynix Semiconductor Manufacturing America Inc.,
`Petitioners,
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`v.
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`DSS Technology Management, Inc.,
`Patent Owner.
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`Case IPR2016-00192
`Patent 6,784,552 B2
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`PATENT OWNER AND PETITIONERS’
`JOINT MOTION TO TERMINATE
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SK hynix Inc., SK hynix America Inc., SK hynix memory solutions Inc., and
`Hynix Semiconductor Manufacturing America Inc.,
`Petitioners,
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`v.
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`DSS Technology Management, Inc.,
`Patent Owner.
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`
`
`Case IPR2016-00192
`Patent 6,784,552 B2
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`PATENT OWNER AND PETITIONERS’
`JOINT MOTION TO TERMINATE
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`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74(a)-(b), Patent Owner
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`DSS Technology Management, Inc. (“DSS” or “Patent Owner”) and Petitioners
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`SK hynix Inc., SK hynix America Inc., SK hynix memory solutions Inc., and
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`Hynix Semiconductor Manufacturing America Inc., (“Hynix” or “Petitioners”)
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`hereby jointly move the Patent Trial and Appeal Board (“Board”) to terminate this
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`Inter Partes Review of U.S. Patent No. 6,784,552 B2 (Case No. IPR2016-00192).
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`I. REASONS FOR GRANTING THE JOINT MOTION TO TERMINATE
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`Generally, the Board expects that a proceeding will terminate after the filing
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`of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed.
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`Reg. 48,756, 48,768 (Aug. 14, 2012). The Board authorized filing this motion by
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`way of an Order authorizing the filing of a motion to terminate. See Paper No. 11
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`(Aug. 25, 2016) (“the Order”). Guidance as to the content of a motion to terminate
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`is provided in the Order. The Board indicated that the joint motion to terminate
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`should (a) update the Board concerning the status of any litigation or proceeding,
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`including, but not limited to proceedings in the U.S. Patent and Trademark Office,
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`involving the subject patent; (b) advise the Board whether any litigation or
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`proceeding involving the subject patent is contemplated in the foreseeable future;
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`and (c) include a statement certifying that there are no collateral agreements or
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`understandings made in connection with, or in contemplation of, the termination
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`of the inter partes review. Paper No. 11 at 2-3. This motion satisfies each of the
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`above requirements and is accompanied by the Parties’ settlement agreement (Ex.
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`1012), as required by 35 U.S.C. § 317(b) and 35 C.F.R. § 42.74 (b)-(c).
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`A. Termination is Appropriate
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`Termination is appropriate under 35 U.S.C. § 317(a) because oral argument
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`has not been held, the Board has not decided the merits of the proceeding, and a
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`final written decision has not been issued. Petitioners filed its petition for inter
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`partes review on November 12, 2015, and trial was instituted on May 11, 2016.
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`Petitioners and Patent Owner have resolved
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`their dispute and have
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`entered into a written settlement agreement to, inter alia, jointly request
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`termination of this inter partes review. A true and correct copy of the
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`settlement agreement is being filed herewith as Exhibit 1012, pursuant to 35
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`U.S.C. § 317(b) and 37 C.F.R. § 42.74(b). The underlying district court litigation
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`between DSS and Hynix is pending dismissal.
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`Thus, termination of the proceeding satisfies the Congressional goal of
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`establishing a more efficient and streamlined patent system that, inter alia, limits
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`unnecessary and counterproductive litigation costs. See “Changes to Implement
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`Inter Partes Review Proceedings, Post-Grant Review Proceedings, and Transitional
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`Program for Covered Business Method Patents,” Final Rule, 77 Fed. Reg., No.
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`157, p. 48680 (Tuesday, August 14, 2012). By permitting termination of review
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`proceedings as to all Parties, upon settlement of their disputes, the USPTO
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`provides a measure of certainty as to the outcome of such proceedings. Such
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`certainty helps foster an environment that promotes settlements, creating a timely,
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`cost-effective alternative to litigation. Further, pursuant to 35 U.S.C. § 317(a), no
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`estoppel shall attach to Petitioners or their privies.
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`B. Status of Related Litigations
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`U.S. Patent No. 6,784,552 B2 is at issue in the following pending litigations:
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` DSS Tech. Mgmt., Inc., v. Intel Corp., et al., No. 6:15-cv-130, (E.D.
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`Tex.) (“Intel”);
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` DSS Tech. Mgmt., Inc., v. Qualcomm Inc., No. 6:15-cv-692, (E.D.
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`Tex.) (“Qualcomm”);
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` DSS Tech. Mgmt., Inc., v. Samsung Elecs. Co., Ltd., et al., No. 6:15-
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`cv-690, (E.D. Tex.) (“Samsung”);
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` DSS Tech. Mgmt., Inc., v. SK hynix Inc., et al., No. 6:15-cv-691, (E.D.
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`Tex.) (“Hynix”)1;
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`In Intel, on March 18, 2016, the U.S. District Court for the Eastern District of
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`Texas entered an Order staying the case pending a final written decision from the
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`1 On October 28, 2015, Judge Gilstrap entered an order consolidating the Qualcomm,
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`Samsung, and Hynix cases.
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`Board on IPR2016-00287, IPR2016-002882, IPR2016-00289, and IPR2016-00290
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`(“the Intel IPRs”). Shortly thereafter, on April 5, 2016, Judge Gilstrap entered an order
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`staying the Qualcomm, Samsung, and Hynix cases pending final written decisions in
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`the Intel IPRs.
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`C. Status of Related Proceedings
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`As mentioned above, the ʼ552 Patent is also at issue in IPR2016-00287 and
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`IPR2016-00288. On June 8, 2016, the Board instituted IPR2016-00287 and IPR2016-
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`00288. Patent Owner’s response is due on September 8, 2016 in IPR2016-00287 and
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`IPR2016-00288.
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`The ʼ552 Patent is also at issue in IPR2016-01311 and IPR2016-01314 (“the
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`Qualcomm IPR Petitions”). Qualcomm filed both of its petitions requesting inter partes
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`review on July 1, 2016. The Board has yet to issue its institution decision on the
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`Qualcomm IPR Petitions.
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`The ʼ552 Patent is also at issue in IPR2016-00782 (“the Samsung IPR Petition”).
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`Samsung filed its petition requesting inter partes review on March 18, 2016. The Board
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`has yet to issue its institution decision on the Samsung IPR Petition.
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`2 U.S. Patent No. 6,784,552 B2 (“the ʼ552 Patent”) is only challenged by Intel in
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`IPR2016-00287 and IPR2016-00288.
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`D. Whether Any Litigation or Proceeding Involving the ʼ552 Patent is
`Contemplated in the Foreseeable Future
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`At this time, the Parties are unaware of any litigation or proceeding involving
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`the ʼ552 Patent (other than described above) being contemplated in the foreseeable
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`future.
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`E. There Are No Collateral Agreements or Understandings Made in
`Connection with, or in Contemplation of, the Termination of the Inter
`Partes Review
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`The Parties certify that other than the Parties’ settlement agreement (Ex.
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`1012), there are no collateral agreements or understandings made in connection
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`with, or in contemplation of, the termination of this inter partes review.
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`II. CONCLUSION
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`Section A. provides a brief explanation as to why termination is appropriate.
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`Sections B. and C. indicate the status of each related litigation or proceeding
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`involving the ʼ552 Patent. Section D. advises the Board whether any litigation or
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`proceeding involving the ʼ552 Patent is contemplated in the foreseeable future, and
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`Section E. includes a statement certifying that other than the Parties’ settlement
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`agreement (Ex. 1012), there are no collateral agreements or understandings made
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`in connection with, or in contemplation of, the termination of this inter partes
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`review. Therefore, Petitioners and Patent Owner respectfully request termination
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`of this Inter Partes Review of U.S. Patent No. 6,784,552 B2 (IPR2016-00192).
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`Additionally, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(a)-(c),
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`Patent Owner and Petitioners will jointly request to file the Settlement
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`Agreement between the parties, Ex. 1012, as business confidential information,
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`which shall be kept separate from the file of the subject patent.
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`Respectfully submitted,
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`/s/ Heath J. Briggs
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`Heath J. Briggs, Reg. No. 54,919
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`GREENBERG TRAURIG, LLP
`1200 17th St., Ste. 2400
`Denver, CO 80202
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`303-572-6500
`HynixGTIPR@gtlaw.com
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`Counsel for Petitioners SK hynix Inc.,
`SK hynix America Inc., SK hynix
`memory solutions Inc., and Hynix
`Semiconductor Manufacturing America,
`Inc.
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`7
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`Dated: August 26, 2016
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`/s/ Andriy Lytvyn
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`Andriy Lytvy, Reg. No. 65, 166
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`SMITH & HOPEN, P.A.
`180 Pine Avenue North
`Oldsmar, FL 34677
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`813-925-8505
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`ipr@smithhopen.com
`andriy.lytvyn@smithhopen.com
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`Counsel for Patent Owner DSS
`Technology Management, Inc.
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`CERTIFICATE OF SERVICE
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`I hereby certify that on August 26, 2016, a copy of this JOINT MOTION TO
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`TERMINATE has been served in its entirety via electronic mail on the following for
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`the Patent Owner:
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`Andriy Lytvy, Reg. No. 65, 166
`SMITH & HOPEN, P.A.
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`180 Pine Avenue North
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`Oldsmar, FL 34677
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`ipr@smithhopen.com
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` andriy.lytvyn@smithhopen.com
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`Respectfully submitted,
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`Dated: August 26, 2016
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`/s/ Heath J. Briggs
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`Heath J. Briggs, Reg. No. 54,919
`GREENBERG TRAURIG, LLP
`1200 17th St., Ste. 2400
`Denver, CO 80202
`303-572-6500
`HynixGTIPR@gtlaw.com
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