`Tel: 571.272.7822
`
`Paper 10
`Entered: June 13, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ASML NETHERLANDS B.V., EXCELITAS TECHNOLOGIES CORP.,
`AND QIOPTIQ PHOTONICS GMBH & CO., KG.,
`Petitioner,
`
`v.
`
`ENERGETIQ TECHNOLOGY, INC.,
`Patent Owner.
`
`Cases IPR2016-00554, -00555, -00556
`Patent 8,309,9431
`
`
`
`
`
`
`
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and BARBARA A.
`PARVIS, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`JUDGMENT
`Termination of Proceedings before Institution
`37 C.F.R. § 42.73
`
`
`On June 6, 2016, Petitioner, ASML Netherlands B.V., Excelitas
`Technologies Corp., and Qioptiq Photonics GmbH & Co. KG, and Patent
`Owner, Energetiq Technology, Inc. filed a Joint Motion to Terminate in each
`
`
`1 This Decision addresses the same issue in the above-identified cases and
`the cases identified in the Appendix. We exercise our discretion to issue one
`Order to be docketed in each case. The parties, however, are not authorized
`to use this style of filing in subsequent papers, without prior authorization.
`
`
`
`IPR2016-00554, -00555, -00556
`Patent 8,309,943
`
`of the above-identified proceedings involving U.S. Patent No. 8,309,943.
`Paper 9.2 The parties also filed a true copy of their Written Settlement
`Agreement, made in connection with the termination of the proceedings, in
`accordance with 37 C.F.R. § 42.74(b). Ex. 1118. Additionally, the parties
`jointly requested that their Written Settlement Agreement, including written
`attachments, filed as Exhibit 1118, be treated as business confidential
`information. Paper 9, 6. For the reasons set forth below, the Joint Motions
`to Terminate and the Joint Request are granted.
`In their Joint Motions to Terminate, the parties indicate that they have
`settled all of their disputes involving the following patents: U.S. Patent Nos.
`7,435,982; 7,786,455; 8,309,943; 8,525,138; 8,969,841; 9,048,000; and
`9,185,786. Paper 9, 5. In particular, the parties have agreed to settle and
`dismiss their related district court case (Energetiq Tech., Inc. v. ASML
`Netherlands B.V., No. 1:15-cv-10240-LTS (D. Mass.)) and terminate the
`International Trade Commission investigation (In the Matter of Certain
`Laser-Driven Light Sources, Subsystems Containing Laser-Driven Light
`Sources, and Products Containing Same, Inv. 337-TA-983 (U.S.
`International Trade Commission)). Id. at 1. Furthermore, the parties also
`have submitted Motions to Terminate all other inter partes reviews
`requested by Petitioner for the aforementioned patents. Id. The proceedings
`not yet instituted involving the above-referenced patents are listed in the
`Appendix of this Decision.
`
`
`2 For the purpose of clarity and expediency, we treat IPR2016-00554 as
`representative, and all citations are to IPR2016-00554 unless otherwise
`noted.
`
`2
`
`
`
`IPR2016-00554, -00555, -00556
`Patent 8,309,943
`
`
`Each of the proceedings addressed in this Decision is in an early
`stage. Petitioner filed a Petition in each of the above-identified proceedings.
`However, we have not determined yet whether an inter partes review should
`be instituted.
`Generally, the Board expects that a proceeding will terminate after the
`filing of a settlement agreement. See, e.g., Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Upon consideration of
`the facts before us, we determine that it is appropriate to terminate the
`above-identified proceedings as to both parties, and enter judgment.
`
`
`ORDER
`For the foregoing reasons, it is:
`ORDERED that the parties’ joint request in each proceeding that their
`settlement agreement (identified by Exhibit number in the Appendix) be
`treated as business confidential information, be kept separate from the patent
`file, and made available only to Federal Government agencies on written
`request, or to any person on a showing of good cause, pursuant to
`37 C.F.R. § 42.74(c), is granted;
`FURTHER ORDERED that the joint motions to terminate in each of
`proceedings listed in the Appendix are granted, and each of the proceedings
`is terminated with respect to both Petitioner and Patent Owner; and
`FURTHER ORDERED that a copy of this Judgment be entered into
`the files of each of the proceedings listed in the Appendix.
`
`
`
`
`
`
`3
`
`
`
`IPR2016-00554, -00555, -00556
`Patent 8,309,943
`
`PETITIONER:
`
`Donald R. Steinberg
`David L. Cavanaugh
`Michael H. Smith
`Brian Seeve
`WILMER CUTLER PICKERING HALE & DORR LLP
`Don.Steinberg@wilmerhale.com
`David.Cavanaugh@wilmerhale.com
`MichaelH.Smith@wilmerhale.com
`Brian.Seeve@wilmerhale.com
`
`PATENT OWNER:
`
`Steven M. Bauer
`Joseph A. Capraro Jr.
`Gerald Worth
`PROSKAUER ROSE LLP
`PTABMattersBoston@proskauer.com
`jcapraro@proskauer.com
`gworth@proskauer.com
`
`
`4
`
`
`
`IPR2016-00554, -00555, -00556
`Patent 8,309,943
`
`
`APPENDIX
`
`
`IPR Case No.
`
`IPR2016-00554
`IPR2016-00555
`IPR2016-00556
`IPR2016-00565
`IPR2016-00566
`IPR2016-00570
`IPR2016-00575
`IPR2016-00576
`IPR2016-00578
`IPR2016-00579
`IPR2016-00583
`IPR2016-00584
`IPR2016-00585
`IPR2016-00688
`IPR2016-00689
`IPR2016-00771
`IPR2016-00774
`IPR2016-00775
`IPR2016-00776
`
`Exhibit No. of
`Settlement Agreement
`Ex. 1118
`Ex. 1317
`Ex. 1217
`Ex. 1135
`Ex. 1229
`Ex. 1120
`Ex. 1217
`Ex. 1317
`Ex. 1417
`Ex. 1517
`Ex. 1319
`Ex. 1419
`Ex. 1513
`Ex. 1235
`Ex. 1336
`Ex. 1039
`Ex. 1241
`Ex. 1339
`Ex. 1139
`
`
`
`
`
`5