`571.272.7822
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Paper No. 9
`Entered: December 26, 2018
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`OLYMPUS CORPORATION, OLYMPUS CORPORATION OF THE
`AMERICAS, and OLYMPUS AMERICA INC.,
`Petitioner,
`
`v.
`
`MAXELL LTD.,
`Patent Owner.
`____________
`
`IPR2018-00904 (Patent 8,339,493 B2) IPR2018-00906 (Patent 7,995,897 B2)
`IPR2018-00908 (Patent 9,100,604 B2) IPR2018-00909 (Patent 9,100,604 B2)
`IPR2018-00910 (Patent 8,059,177 B2) IPR2018-00911 (Patent 7,457,529 B2)
`____________
`
`Before LYNNE E. PETTIGREW, MINN CHUNG,
`TERRENCE W. McMILLIN, and JOHN A. HUDALLA, Administrative
`Patent Judges.1
`
`PER CURIAM.
`
`
`ORDER
`Granting Petitioner’s Authorized Unopposed Motion to Dismiss Proceeding,
`Granting Authorized Joint Request to File Agreement As
`Business Confidential Information
`37 C.F.R. § 42.74
`
`
`1 This is not an order from an expanded panel of the Board. Judges
`Pettigrew, Chung, and McMillin are paneled on IPR2018-00908. Judges
`Chung, McMillin, and Hudalla are paneled on IPR2018-00904, IPR2018-
`00906, IPR2018-00909, IPR2018-00910, and IPR2018-00911.
`
`
`
`
`
`IPR2018-00904 (Patent 8,339,493 B2) IPR2018-00906 (Patent 7,995,897 B2)
`IPR2018-00908 (Patent 9,100,604 B2) IPR2018-00909 (Patent 9,100,604 B2)
`IPR2018-00910 (Patent 8,059,177 B2) IPR2018-00911 (Patent 7,457,529 B2)
`
`INTRODUCTION
`I.
`On December 18, 2018, Olympus Corporation, Olympus Corporation
`of the Americas, and Olympus America Inc. (collectively “Petitioner”) filed
`Motions to Dismiss the above-referenced proceedings with prejudice
`(collectively “Motions”). Paper 7, 1–4.2,3 As indicated in the Motions, the
`Board authorized the filing of the Motions during a conference call on
`November 30, 2018. Id. at 1. Petitioner further represents that Patent
`Owner does not oppose the Motions. Id. Along with the Motions, Petitioner
`and Patent Owner (collectively referred to as “the Parties”) filed copies of a
`Patent License Agreement (“Agreement”) (Ex. 1018)4, as well as Joint
`Requests to File Agreement as Business Confidential Information pursuant
`to 35 U.S.C. § 317(b) (collectively “Joint Requests”) (Paper 8, 1–2).5,6
`
`
`II. DISCUSSION
`In its Motions, Petitioner represents that the Parties have resolved
`their dispute as to the patents in the above-identified inter partes review
`proceedings. Paper 7, 1–2. Further, in the Joint Requests, the Parties: (a)
`
`
`2 For purposes of expediency, we cite to the paper filed in IPR2018-00904.
`Similar papers were filed in IPR2018-00906 (Paper 9), IPR2018-00908
`(Paper 7), IPR2018-00909 (Paper 7), IPR2018-00910 (Paper 7), and
`IPR2018-00911 (Paper 7).
`3 The pages of the respective Motions are unnumbered.
`4 The parties also filed a copy of the Agreement in IPR2018-00906
`(Ex. 1010), IPR2018-00908 (Ex. 1018), IPR2018-00909 (Ex. 1018),
`IPR2018-00910 (Ex. 1018), and IPR2018-00911 (Ex. 1010).
`5 The Parties filed similar Joint Requests in IPR2018-00906 (Paper 10),
`IPR2018-00908 (Paper 8), IPR2018-00909 (Paper 8), IPR2018-00910
`(Paper 8), and IPR2018-00911 (Paper 8).
`6 The pages of the respective Joint Requests are also unnumbered.
`
`2
`
`
`
`IPR2018-00904 (Patent 8,339,493 B2) IPR2018-00906 (Patent 7,995,897 B2)
`IPR2018-00908 (Patent 9,100,604 B2) IPR2018-00909 (Patent 9,100,604 B2)
`IPR2018-00910 (Patent 8,059,177 B2) IPR2018-00911 (Patent 7,457,529 B2)
`
`request that the Agreement be treated as business confidential information
`and be kept separate from the files of the respective patents involved in the
`above-identified inter partes proceedings; (b) represent that the Agreement
`resolves all currently pending Patent Office and District Court proceedings
`between the Parties involving the above-identified patents at issue; and (c)
`represent that the filed copies of the Agreement are true copies. Paper 8, 1–
`2.
`
`These proceedings are at an early stage, and we have not yet decided
`whether to institute a trial in any of these proceedings. In view of the early
`stage of these proceedings and the settlement between the Parties, we
`determine that good cause exists to dismiss these proceedings with
`prejudice.
`Further, after reviewing the Agreement between the Parties, we find
`that the Agreement contains confidential business information regarding the
`terms of settlement. We determine that good cause exists to treat the
`Agreement between the Parties as business confidential information
`pursuant to 37 C.F.R. § 42.74(c).
`This Order does not constitute a final written decision pursuant to
`35 U.S.C. § 318(a).
`
`III. ORDER
`Accordingly, for the reasons discussed above, it is:
`ORDERED that Petitioner’s Motions to Dismiss with prejudice are
`granted, and IPR2018-00904, IPR2018-00906, IPR2018-00908, IPR2018-
`00909, IPR2018-00910, and IPR2018-00911 are dismissed with prejudice;
`
`FURTHER ORDERED that the Joint Requests to File the Settlement
`Agreement as Business Confidential Information are granted, and the
`
`3
`
`
`
`IPR2018-00904 (Patent 8,339,493 B2) IPR2018-00906 (Patent 7,995,897 B2)
`IPR2018-00908 (Patent 9,100,604 B2) IPR2018-00909 (Patent 9,100,604 B2)
`IPR2018-00910 (Patent 8,059,177 B2) IPR2018-00911 (Patent 7,457,529 B2)
`
`Settlement Agreement shall be kept separate from the files of Patent
`8,333,493, Patent 7,995,897, Patent 9,100,604, Patent 8.059,177, and Patent
`7,457,529 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).
`
`PETITIONER:
`William McCabe
`Matthew Moffa
`wmccabe@perkinscoie.com
`mmoffa@perkinscoie.com
`
`
`PATENT OWNER:
`Robert Pluta
`Michael Word
`Saqib Siddiqui
`rpluta@mayerbrown.com
`mword@mayerbrown.com
`ssiddiqui@mayerbrown.com
`
`4
`
`