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`571-272-7822
`Date Entered: August 17, 2016
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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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`HTC CORPORATION, HTC AMERICA, INC., and
`LG ELECTRONICS, INC.
`Petitioner,
`
`v.
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`PARTHENON UNIFIED MEMORY ARCHITECTURE LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00847
`Patent 5,812,789
`____________
`
`
`
`Before MICHAEL R. ZECHER, JAMES B. ARPIN, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
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`
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`DECISION
`Termination of the Proceeding Only as to LG Electronics, Inc.
`37 C.F.R. §§ 42.72 and 42.74
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`IPR2016-00847
`Patent 5,812,789
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`I. DISCUSSION
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`On August 15, 2016, Petitioner entity, LG Electronics, Incorporated (“LG”),
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`and Patent Owner, Parthenon Unified Memory Architecture Limited Liability
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`Corporation (“Parthenon”), filed a Joint Motion to Terminate this proceeding only
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`as to LG (Paper 13), a true copy of the settlement agreement (Ex. 2001), and a
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`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 14).
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`This proceeding is still in its preliminary stages. On April 7, 2016, LG,
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`along with remaining Petitioner entities, HTC Corporation and HTC America,
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`Incorporated (collectively, “HTC”), filed a Petition requesting an inter partes
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`review of claims 1, 3–6, 11, and 13 of U.S. Patent No. 5,812,789 (Ex. 1001, “the
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`’789 patent”). Paper 1. Parthenon waived its right to file a Preliminary Response
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`in this proceeding. Paper 9. We have not entered a decision whether or not to
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`institute an inter partes review.
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`In the Joint Motion to Terminate this proceeding only as to LG, LG and
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`Parthenon represent that they have settled their disputes regarding the ’789 patent.
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`Paper 13, 2. LG and Parthenon further represent that the ’789 patent was asserted
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`against multiple companies in the United States District Court for the Eastern
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`District of Texas. Id. at 2–3. In addition to this proceeding, LG and Parthenon
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`represent that they are parties in the following proceedings before the Board:
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`(1) Case IPR2015-01500; (2) Case IPR2015-01501; (3) Case IPR2015-01502; and
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`(4) Case IPR2016-00848. Id. at 3. According to LG and Parthenon, they are in the
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`process of filing a Joint Motion to Terminate in each of these proceedings. Id.
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`Lastly, LG and Parthenon represent that the ’789 patent remains at issue in the
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`following proceedings before the Board: (1) Case IPR2016-00664; (2) Case
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`IPR2016-00923; and (3) Case IPR2016-01135. Id. Under these particular
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`2
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`IPR2016-00847
`Patent 5,812,789
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`circumstances, we determine that it is appropriate to terminate this proceeding only
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`as to LG. 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 LG’s and Parthenon’s joint request to treat the settlement
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`agreement (Ex. 2001) as business confidential information under 35 U.S.C.
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`§ 317(b) and 37 C.F.R. § 42.74(c) is GRANTED;
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`FURTHER ORDERED that the Joint Motion to Terminate this proceeding
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`only as to LG is GRANTED, and LG may no longer participate as a party in this
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`proceeding; and
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`FURTHER ORDERED that HTC and Parthenon will continue to participate
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`in this proceeding as adversarial parties.
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`3
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`IPR2016-00847
`Patent 5,812,789
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`For PETITIONER:
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`Joseph A. Micallef
`Samuel A. Dillon
`SIDLEY AUSTIN LLP
`jmicallef@sidley.com
`samuel.dillon@sidley.com
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`Rajeev Gupta
`Joshua Goldberg
`Michael V. Young
`Elizabeth Niemeyer
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`Raj.gupta@finnegan.com
`LGE-CCE-IPR@finnegan.com
`Michael.Young@finnegan.com
`Elizabeth.Niemeyer@finnegan.com
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`
`For PATENT OWNER:
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`Masood Anjom
`Scott Clark
`AHMAD, ZAVITSANOS, ANAIPAKOS, ALAVI & MENSING P.C.
`manjom@azalaw.com
`sclark@azalaw.com
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`4
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