Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 8
`Entered: March 12, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG DISPLAY CO., LTD. and APPLE INC.,
`Petitioner,
`v.
`SOLAS OLED LTD.,
`Patent Owner.
`
`IPR2020-003201
`Patent 7,446,338 B2
`
`APPLE INC.,
`Petitioner,
`v.
`SOLAS OLED LTD.,
`Patent Owner.
`
`IPR2020-01275
`Patent 7,446,338 B2
`
`
`
`
`
`
`
`
`
`
`
`
`Before SALLY C. MEDLEY, JESSICA C. KAISER, and JULIA HEANEY,
`Administrative Patent Judges.
`KAISER, Administrative Patent Judge.
`
`
`1 Apple Inc., which filed a petition in IPR2020-01275, has been joined as a
`petitioner in IPR2020-00320.
`
`
`571-272-7822
`
`
`Paper No. 8
`Entered: March 12, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG DISPLAY CO., LTD. and APPLE INC.,
`Petitioner,
`v.
`SOLAS OLED LTD.,
`Patent Owner.
`
`IPR2020-003201
`Patent 7,446,338 B2
`
`APPLE INC.,
`Petitioner,
`v.
`SOLAS OLED LTD.,
`Patent Owner.
`
`IPR2020-01275
`Patent 7,446,338 B2
`
`
`
`
`
`
`
`
`
`
`
`
`Before SALLY C. MEDLEY, JESSICA C. KAISER, and JULIA HEANEY,
`Administrative Patent Judges.
`KAISER, Administrative Patent Judge.
`
`
`1 Apple Inc., which filed a petition in IPR2020-01275, has been joined as a
`petitioner in IPR2020-00320.
`
`
`
`IPR2020-00320
`IPR2020-01275
`Patent 7,446,338 B2
`
`
`
`
`ORDER
`Settlement as to Apple Inc.
`Termination Due to Settlement After Institution of Trial
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`INTRODUCTION
`I.
`Samsung Display Co., Ltd. (“Samsung”) filed a Petition seeking
`institution of an inter partes review of claims 1–3 and 5–13 of U.S. Patent
`No. 7,446,338 B2 (Ex. 1001, “the ’338 patent”). Paper 1.2 After reviewing
`the Petition (Paper 1) and Patent Owner’s preliminary response (Paper 6),
`we instituted an inter partes review. Paper 9.
`After institution, Apple Inc. (“Apple”), filed a petition and a joinder
`motion in IPR2020-01275, requesting that Apple be joined as a petitioner in
`IPR2020-00320. Apple Inc. v. Solas OLED, Ltd., IPR2020-01275, Paper 1
`(petition), Paper 3 (joinder motion). After considering the parties’ papers,
`we instituted trial in IPR2020-01275, granted Apple’s joinder motion, and
`added Apple as a petitioner to IPR2020-00320. Apple Inc. v. Solas OLED,
`Ltd., IPR2020-01275, Paper 7 (Institution Decision). In addition, we entered
`a copy of that decision in IPR2020-00320. Paper 24.
`On March 2, 2021, pursuant to our authorization, Petitioner Apple and
`Patent Owner Solas OLED, Ltd. (“Solas”) filed a Joint Motion to Terminate
`as to Petitioner Apple. Paper 29 (“Motion” or “Mot.”). Apple and Solas
`also filed a copy of a settlement agreement (Ex. 2009), along with an
`authorized joint request to treat the settlement agreement as business
`
`
`2 Unless otherwise indicated, all Paper numbers referenced herein refer to
`IPR2020-00320.
`
`
`
`2
`
`
`
`IPR2020-00320
`IPR2020-01275
`Patent 7,446,338 B2
`
`confidential information and to keep it separate under 35 U.S.C. § 317(b)
`and 37 C.F.R. § 42.74(c) (Paper 30).
`In the Motion, Apple and Solas state that they have settled their
`dispute with respect to IPR2020-00320 and IPR2020-01275, and that the
`related district court litigation styled Solas OLED Ltd. v. Apple Inc., 6:19-cv-
`00537-ADA (W.D. Tex.) has been dismissed. Mot. 2.
`They also submit that Confidential Exhibit 2009 is a true copy of the
`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 (Apple and Solas) represent that they have
`complied with the applicable requirements, we terminate the inter partes
`review with respect to Petitioner Apple. See 35 U.S.C. § 317(a); 37 C.F.R.
`§ 42.74. We also grant the parties’ request to treat the settlement agreement
`(Exhibit 2009) as business confidential information. See 35 U.S.C. § 317(b);
`37 C.F.R. § 42.74(c).
`
`
`
`3
`
`
`
`IPR2020-00320
`IPR2020-01275
`Patent 7,446,338 B2
`
`
`Samsung, the original Petitioner in IPR2020-00320, is not a party to
`the settlement agreement and did not join the Motion. Accordingly,
`IPR2020-00320 remains pending as to Petitioner Samsung Display Co., Ltd.
`
`
`
`ORDER
`
`Accordingly, it is:
`ORDERED that the Joint Motion to Terminate with respect to Apple
`only is granted in IPR2020-00320;
`FURTHER ORDERED that the case caption for future submissions in
`IPR2020-00320 shall not list Apple as a petitioner;
`FURTHER ORDERED that the settlement agreement (Exhibit 2009)
`be treated as business confidential information and be kept separate from the
`files of the involved U.S. Patent No. 7,446,338 B2;
`FURTHER ORDERED this paper does not constitute a final written
`decision pursuant to 35 U.S.C. § 318(a); and
`FURTHER ORDERED that IPR2020-01275 be terminated under
`37 C.F.R. § 42.72.
`
`
`
`
`
`
`4
`
`
`
`IPR2020-00320
`IPR2020-01275
`Patent 7,446,338 B2
`
`PETITIONER:
`
`David A. Garr
`Grant D. Johnson
`Peter P. Chen
`COVINGTON & BURLING LLP
`dgarr@cov.com
`gjohnson@cov.com
`pchen@cov.com
`
`
`PATENT OWNER:
`
`Neil Rubin
`Reza Mirzaie
`Kent Shum
`Philip Wang
`RUSS AUGUST & KABAT
`nrubin@raklaw.com
`rmirzaie@raklaw.com
`kshum@raklaw.com
`pwang@raklaw.com
`
`
`
`
`5
`
`
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