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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG DISPLAY CO., LTD. and APPLE INC.,
`Petitioners,
`
`v.
`
`SOLAS OLED, LTD.,
`Patent Owner.
`
`
`Case No. IPR2020-003201
`U.S. Patent No. 7,446,338
`
`
`
`JOINT MOTION TO TERMINATE IPR
`WITH RESPECT TO PETITIONER APPLE
`
`
`
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`1 Apple Inc., who filed a petition in IPR2020-01275, has been joined as a petitioner
`in this proceeding.
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`
`
`Case No. IPR2020-00320
`U.S. Patent 7,446,338
`
`
`Patent Owner Solas OLED Ltd. and Petitioner Apple Inc. have reached a
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`settlement. Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. §§ 42.72 and 42.74, the
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`parties jointly request termination of the inter partes review of U.S. Patent No.
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`7,446,338 (“Patent-in-Suit”), Case IPR2020-00320, with respect to Petitioner Apple.
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`Apple filed a joinder petition in IPR2020-01275 and was joined as a petitioner in
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`this IPR. Accordingly, Solas and Apple jointly request termination of:
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`• IPR2020-00320 with respect to Petitioner Apple; and
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`• IPR2020-01275 in its entirety
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`The Board authorized Solas and Apple to file this joint motion to terminate by e-
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`mail on January 29, 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
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`of the settlement agreement (Agreement) that resolves the disputes in the above-
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`captioned IPRs relating to the Patent-in-Suit is filed herewith as a confidential
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`exhibit. There are no other collateral agreements between the parties made in
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`connection with, or in contemplation of, the termination sought.
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`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), Solas and Apple are
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`concurrently filing a Joint Request to File Agreement as Business Confidential
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`Information, which asks the Board to treat the settlement agreement as business
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`
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`1
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`confidential information, and to keep it separate from the files of this proceeding and
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`Case No. IPR2020-00320
`U.S. Patent 7,446,338
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`the files of the Patent-in-Suit.
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`I.
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`Statement of Precise Relief Requested
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`Solas and Apple jointly request that the Board: (1) terminate IPR2020-00320
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`with respect to Petitioner Apple; and (2) terminate IPR2020-01275 in its entirety.
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`II. Reasons Why Termination Is Appropriate
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`Termination of this IPR2020-00320 with respect to Apple is proper. The
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`Board has not decided the merits of this proceeding, and Apple does not intend to
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`further participate in this IPR. In these circumstances, the Board should terminate an
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`IPR with respect “any petitioner” upon the joint request of that petitioner and patent
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`owner. See 35 U.S.C. § 317(a). After Apple is terminated, this IPR may continue
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`with Samsung Display Co., Ltd. as the sole Petitioner.
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`Likewise, termination of IPR2020-01275 in its entirety is appropriate. Apple
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`is the only Petitioner in IPR2020-01275, 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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`IPR, so IPR2020-01275 should be terminated.
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`The lawsuit between Solas and Apple involving the Patent-in-Suit has been
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`dismissed.
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`III. No Future Participation by Petitioner
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`Apple will not be participating further in this proceeding.
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`2
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`
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`Case No. IPR2020-00320
`U.S. Patent 7,446,338
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`
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`IV. Conclusion
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`Solas and Apple have settled the disputes in the above-captioned inter partes
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`review relating to the Patent-in-Suit. This Board has not decided the merits or
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`entered a final written decision on the merits in this proceeding. Accordingly, Solas
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`and Apple request that the Board (1) terminate IPR2020-00320 with respect to
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`Petitioner Apple; and (2) terminate IPR2020-01275 in its entirety.
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`
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`Date: March 2, 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
`
`/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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`3
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`
`
`Case No. IPR2020-00320
`U.S. Patent 7,446,338
`
`
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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 2, 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
`Grant Johnson, gjohnson@cov.com
`Peter Chen, pchen@cov.com
`
`Counsel for Petitioner Samsung
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`Adam Seitz, adam.seitz@eriseip.com
`Paul Hart, paul.hart@eriseip.com
`
`Counsel for Petitioner Apple
`
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`Date: March 2, 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
`
`4
`
`
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