Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 9
`Entered: March 11, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG DISPLAY CO., LTD., DELL, INC., and APPLE INC.,
`Petitioner,
`
`v.
`
`SOLAS OLED LTD.,
`Patent Owner.
`
`IPR2020-001401
`Patent 6,072,450
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SOLAS OLED LTD.,
`Patent Owner.
`
`IPR2020-01059
`Patent 6,072,450
`
`
`
`
`
`
`
`
`
`
`
`
`
`Before SALLY C. MEDLEY, JESSICA C. KAISER, and JULIA HEANEY,
`Administrative Patent Judges.
`
`HEANEY, Administrative Patent Judge.
`
`
`1 Apple Inc., which filed a petition in IPR2020-01059, has been joined as a
`petitioner in IPR2020-00140.
`
`
`571-272-7822
`
`
`
`Paper 9
`Entered: March 11, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG DISPLAY CO., LTD., DELL, INC., and APPLE INC.,
`Petitioner,
`
`v.
`
`SOLAS OLED LTD.,
`Patent Owner.
`
`IPR2020-001401
`Patent 6,072,450
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SOLAS OLED LTD.,
`Patent Owner.
`
`IPR2020-01059
`Patent 6,072,450
`
`
`
`
`
`
`
`
`
`
`
`
`
`Before SALLY C. MEDLEY, JESSICA C. KAISER, and JULIA HEANEY,
`Administrative Patent Judges.
`
`HEANEY, Administrative Patent Judge.
`
`
`1 Apple Inc., which filed a petition in IPR2020-01059, has been joined as a
`petitioner in IPR2020-00140.
`
`
`
`IPR2020-00140
`IPR2020-01059
`Patent 6,072,450
`
`
`
`ORDER
`Settlement as to Dell, Inc. and Apple Inc.
`Termination Due to Settlement After Institution of Trial
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`
`I.
`
`INTRODUCTION
`
`Samsung Display Co., Ltd. (“Samsung”) and Dell, Inc. (“Dell) filed a
`
`Petition seeking institution of an inter partes review of claims 1–9, 11–13,
`
`and 15–18 of U.S. Patent No. 6,072,450 (Ex. 1001, “the ’450 patent”).
`
`Paper 1.2 After reviewing the Petition (Paper 1) and Patent Owner’s
`
`preliminary response (Paper 7), we instituted an inter partes review.
`
`Paper 9.
`
`After institution, Apple Inc. (“Apple”), filed a petition and a joinder
`
`motion in IPR2020-01059, requesting that Apple be joined as a petitioner in
`
`IPR2020-00140. Apple Inc. v. Solas OLED, Ltd., IPR2020-01059, Paper 1
`
`(petition), Paper 3 (joinder motion). After considering the parties’ papers,
`
`we instituted trial in IPR2020-01059, granted Apple’s joinder motion, and
`
`added Apple as a petitioner to IPR2020-00140. Apple Inc. v. Solas OLED,
`
`Ltd., IPR2020-01059, Paper 8 (Institution Decision). In addition, we entered
`
`a copy of that decision in IPR2020-00140. Paper 27.
`
`On March 3, 2021, pursuant to our authorization, Petitioner Dell,
`
`Petitioner Apple, and Patent Owner Solas OLED, Ltd. (“Solas”) filed a Joint
`
`Motion to Terminate as to Petitioner Dell and Petitioner Apple. Paper 44
`
`(“Motion” or “Mot.”). Dell, Apple, and Solas also filed a copy of settlement
`
`
`2 Unless otherwise indicated, all Paper numbers referenced herein refer to
`IPR2020-00140.
`
`
`
`2
`
`
`
`IPR2020-00140
`IPR2020-01059
`Patent 6,072,450
`
`agreements (Ex. 2009, Dell; Ex. 2010, Apple), along with an authorized
`
`joint request to treat the settlement agreement as business confidential
`
`information and to keep it separate under 35 U.S.C. § 317(b) and 37 C.F.R.
`
`§ 42.74(c) (Paper 45).
`
`In the Motion, Dell, Apple and Solas state that they have settled their
`
`dispute with respect to IPR2020-00140, that Apple and Solas have settled
`
`their dispute with respect to IPR2020-01059, and that the related district
`
`court litigations styled Solas OLED Ltd. v. Dell Technologies Inc., 6:19-cv-
`
`00514-ADA (W.D. Tex.) and Solas OLED Ltd. v. Apple Inc., 6:19-cv-
`
`00537-ADA (W.D. Tex.) have been dismissed. Mot. 3.
`
`They also submit that each of Confidential Exhibit 2009 and
`
`Confidential Exhibit 2010 is a true copy of the respective settlement
`
`agreement and there are no collateral agreements made in connection with,
`
`or in contemplation of, the termination of the inter partes review. Id. at 1.
`
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
`
`this chapter shall be terminated with respect to any petitioner upon the joint
`
`request of the petitioner and the patent owner, unless the Office has decided
`
`the merits of the proceeding before the request for termination is filed.” Any
`
`agreement or understanding “made in connection with, or in contemplation
`
`of, the termination of an inter partes review” must be in writing, and a true
`
`copy of any such documents must be filed in the Office before termination.
`
`Id. § 317(b); accord 37 C.F.R. § 42.74(b).
`
`Because the moving parties (Dell, Apple, and Solas) represent that
`
`they have complied with the applicable requirements, we terminate the inter
`
`partes review with respect to Petitioner Dell and Petitioner Apple. See
`
`
`
`3
`
`
`
`IPR2020-00140
`IPR2020-01059
`Patent 6,072,450
`
`35 U.S.C. § 317(a); 37 C.F.R. § 42.74. We also grant the parties’ request to
`
`treat the settlement agreements (Exhibit 2009, Exhibit 2010) as business
`
`confidential information. See 35 U.S.C. § 317(b); 37 C.F.R. § 42.74(c).
`
`Samsung, an original Petitioner in IPR2020-00140, is not a party to
`
`the settlement agreements and did not join the Motion. Accordingly,
`
`IPR2020-00140 remains pending as to Petitioner Samsung Display Co., Ltd.
`
`
`
`
`
`Accordingly, it is:
`
`ORDER
`
`ORDERED that the Joint Motion to Terminate with respect to Dell
`
`and Apple is granted in IPR2020-00140;
`
`FURTHER ORDERED that the case caption for future submissions in
`
`IPR2020-00140 shall not list Dell and Apple as petitioners;
`
`FURTHER ORDERED that the settlement agreements (Exhibit 2009,
`
`Exhibit 2010) be treated as business confidential information and be kept
`
`separate from the files of the involved U.S. Patent No. 6,072,450;
`
`FURTHER ORDERED this paper does not constitute a final written
`
`decision pursuant to 35 U.S.C. § 318(a); and
`
`FURTHER ORDERED that IPR2020-01059 be terminated under
`
`37 C.F.R. § 42.72.
`
`
`
`
`
`
`
`4
`
`
`
`IPR2020-00140
`IPR2020-01059
`Patent 6,072,450
`
`PETITIONER:
`
`David A. Garr
`Grant Johnson
`Peter P. Chen
`COVINGTON & BURLING LLP
`dgarr@cov.com
`gjohnson@cov.com
`pchen@cov.com
`
`
`Adam P. Seitz
`Paul R. Hart
`ERISE IP, P.A.
`adam.seitz@eriseip.com
`paul.hart@eriseip.com
`
`
`PATENT OWNER:
`
`Neil A. Rubin
`Reza Mirzaie
`RUSS AUGUST & KABAT
`nrubin@raklaw.com
`rmirzaie@raklaw.com
`
`
`Philip Wang
`Neil A. Rubin
`Reza Mirzaie
`Kent N. Shum
`RUSS AUGUST & KABAT
`pwang@raklaw.com
`nrubin@raklaw.com
`rmirzaie@raklaw.com
`kshum@raklaw.com
`
`
`
`5
`
`
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