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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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`SAMSUNG DISPLAY CO., LTD., DELL, INC., and APPLE INC.,
`Petitioners,
`
`v.
`
`SOLAS OLED, LTD.,
`Patent Owner.
`
`
`Case No. IPR2020-001401
`U.S. Patent No. 6,072,450
`
`
`
`JOINT MOTION TO TERMINATE IPR WITH
`RESPECT TO PETITIONERS DELL AND APPLE
`
`
`
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`1 Apple Inc., who filed a petition in IPR2020-01059, has been joined as a petitioner
`in this proceeding.
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`
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`Case No. IPR2020-00140
`U.S. Patent 6,072,450
`
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`Patent Owner Solas OLED Ltd., and Petitioners Dell, Inc. and Apple Inc.
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`respectively, have each reached a settlement. Pursuant to 35 U.S.C. § 317(a) and 37
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`C.F.R. §§ 42.72 and 42.74, these parties jointly request termination of the inter partes
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`review of U.S. Patent No. 6,072,450 (“Patent-at-Issue”), Case IPR2020-00140, with
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`respect to Petitioners Dell and Apple. Apple filed a joinder petition in IPR2020-
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`01059 and was joined as a petitioner in this IPR. Accordingly, Solas, Dell, and Apple
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`jointly request termination of:
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`• IPR2020-00140 with respect to Petitioners Dell and Apple; and
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`• IPR2020-01059 in its entirety
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`The Board authorized Solas, Dell, and Apple to file this joint motion to terminate by
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`e-mail on January 29, 2021 and February 12, 2021.
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`As required under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), a true copy
`
`of the agreements that resolve the disputes in the above-captioned IPRs relating to
`
`the Patent-at-Issue are filed herewith as confidential exhibits. Solas and Dell hereby
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`certify that are no other agreements (or collateral agreements) between those parties
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`made in connection with, or in contemplation of, the termination sought as to Dell.
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`Likewise, Solas and Apple hereby certify that are no other agreements (or collateral
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`agreements) between those parties made in connection with, or in contemplation of,
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`the termination sought as to Apple.
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`
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`1
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`Case No. IPR2020-00140
`U.S. Patent 6,072,450
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`
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`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), Solas, Dell, and
`
`Apple are concurrently filing a Joint Request to File Agreement as Business
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`Confidential Information, which asks the Board to treat the Agreements as business
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`confidential information, and to keep them separate from the files of this proceeding
`
`and the files of the Patent-at-Issue.
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`I.
`
`Statement of Precise Relief Requested
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`Solas, Dell, and Apple jointly request that the Board: (1) terminate IPR2020-
`
`00140 with respect to Petitioners Dell and Apple; and (2) terminate IPR2020-01059
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`in its entirety.
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`II. Reasons Why Termination Is Appropriate
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`Termination of this IPR2020-00140 with respect to Dell and Apple is proper.
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`The Board has not decided the merits of this proceeding, and Dell and Apple do not
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`intend to further participate in this IPR. In these circumstances, the Board should
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`terminate an IPR with respect “any petitioner” upon the joint request of that
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`petitioner and patent owner. See 35 U.S.C. § 317(a). After Dell and Apple are
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`terminated, this IPR may continue with Samsung Display Co., Ltd. as the sole
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`Petitioner.
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`Likewise, termination of IPR2020-01059 in its entirety is appropriate. Apple
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`is the only Petitioner in IPR2020-01059, which was joined into this IPR after
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`Apple’s joinder petition was instituted. Apple no longer intends to participate in this
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`
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`2
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`
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`Case No. IPR2020-00140
`U.S. Patent 6,072,450
`
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`IPR, so IPR2020-001059 should be terminated.
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`The lawsuits between Solas and Dell; and Solas and Apple involving the
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`Patent-at-Issue have been dismissed.
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`III. No Further Participation By Petitioners Dell and Apple
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`Dell and Apple will not be participating further in this proceeding.
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`IV. Conclusion
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`Solas, Dell, and Apple have settled the disputes in the above-captioned inter
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`partes review relating to the Patent-at-Issue. This Board has not decided the merits
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`or entered a final written decision in this proceeding. Accordingly, Solas, Dell, and
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`Apple request that the Board (1) terminate IPR2020-00140 with respect to
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`Petitioners Dell and Apple; and (2) terminate IPR2020-01059 in its entirety.
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`
`
`Date: March 3, 2021
`
`/Neil Rubin/
`
`
`
`
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`Respectfully submitted,
`
`
`
`
`
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`
`
`
`
`
`
`Neil Rubin (Reg. No. 67,030)
`RUSS AUGUST & KABAT
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`Phone: (310) 826-7474
`nrubin@raklaw.com
`
`Counsel for Patent Owner
`
`3
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`Case No. IPR2020-00140
`U.S. Patent 6,072,450
`
`/David A. Garr/
`
`
`
`
`
`David A. Garr (Reg. No. 74,932)
`COVINGTON & BURLING LLP
`One CityCenter, 850 Tenth Street, NW
`Washington, DC 20001
`
`Peter P. Chen
`Registration No. 39,631
`COVINGTON & BURLING LLP
`3000 El Camino Real
`5 Palo Alto Square, 10th Floor
`Palo Alto, CA 94306
`
`Counsel for Petitioner Dell
`
`
`
`/Adam P. Seitz/
`Adam P. Seitz (Reg. No. 52,206)
`ERISE IP, P.A.
`7015 College Blvd., Ste. 700
`Overland Park, Kansas 66211
`Phone: (913) 777-5600
`Adam.Seitz@eriseip.com
`
`Counsel for Petitioner Apple
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`4
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`Case No. IPR2020-00140
`U.S. Patent 6,072,450
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`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e)(1))
`
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`The undersigned hereby certifies that the above document was served on
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`March 3, 2021, by filing this document through the Patent Trial and Appeal Board
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`End to End system as well as delivering a copy via electronic mail upon the
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`following attorneys of record for the Petitioners:
`
`David Garr, dgarr@cov.com
`Peter Chen, pchen@cov.com
`
`Counsel for Petitioners Dell and Samsung Display Co.
`
`Adam Seitz, adam.seitz@eriseip.com
`Paul Hart, paul.hart@eriseip.com
`
`Counsel for Petitioner Apple
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`Date: March 3, 2021
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`/Neil Rubin/
`
`
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`
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`Neil Rubin (Reg. No. 67,030)
`RUSS AUGUST & KABAT
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`Phone: (310) 826-7474
`
`Counsel for Patent Owner
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`5
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