`571-272-7822
`
`
`
`Paper 24
`Entered: September 26, 2022
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`SAMSUNG ELECTRONICS CO., LTD., AND
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`SOLAS OLED LTD.,
`Patent Owner.
`____________
`
`IPR2021-00591
`Patent 7,868,880 B2
`____________
`
`Before SALLY C. MEDLEY, JO-ANNE M. KOKOSKI, and
`JULIA HEANEY, Administrative Patent Judges.
`
`HEANEY, Administrative Patent Judge.
`
`
`TERMINATION
`Due to Settlement After Institution of Trial
`Granting Joint Request to Keep Separate
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`
`
`
`
`IPR2021-00591
`Patent 7,868,880 B2
`
`
`INTRODUCTION
`I.
`On August 12, 2022, with Board authorization, the parties filed a Joint
`Motion to Terminate (Paper 22, “Joint Motion”). With the Joint Motion, the
`parties filed a Patent License Agreement and Release Agreement
`(Exhibit 1015) and their Escrow Agreement (Exhibit 1016) (collectively
`“Settlement Agreement”) that resolves the disputes between the parties
`related to the above-identified proceeding. Joint Motion 1. The parties also
`filed a Joint Request to Keep Separate (Paper 23, “Joint Request”) that
`requests the Board to treat the Settlement Agreement as business
`confidential information and to keep it separate from the publicly available
`files in the above-identified proceeding. Paper 23, 1.
` II. DISCUSSION
`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.” It is
`also provided in 35 U.S.C. § 317(a) that if no petitioner remains in the inter
`partes review, the Office may terminate the review.
`In the Joint Motion, the parties represent that they have reached an
`agreement to jointly seek termination of the above-identified proceeding, the
`filed copy of the Settlement Agreement is a true copy, and “[t]here are no
`other collateral agreements between the parties made in connection with, or
`in contemplation of, the termination sought.” Joint Motion 1. Further, the
`parties represent that they filed all agreements between themselves,
`including all collateral agreements referred to, made in connection with, or
`in contemplation of, the termination of this proceeding, as 35 U.S.C.
`
`
`
`2
`
`
`
`IPR2021-00591
`Patent 7,868,880 B2
`
`§ 317(b) requires.
`The Board generally expects that a case “will terminate after the filing
`of a settlement agreement, unless the Board has already decided the merits.”
`Consolidated Trial Practice Guide, 86 (Nov. 2019); see also 35 U.S.C.
`§ 317(a); 37 C.F.R. §§ 42.72, 42.74. The Board has not decided the merits
`of this proceeding, and this proceeding involves no other parties.
`Accordingly, under these circumstances, we determine that good cause
`exists to terminate this proceeding. Id.
`Further, we find that the Settlement Agreement contains confidential
`business information regarding the terms of settlement. We determine that
`good cause exists to treat the Settlement Agreement as business confidential
`information and keep it separate from the file of Patent 7,868,880 pursuant
`to 35 U.S.C. § 317(b) and 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 the Joint Motion is granted, and IPR2021-00591 is
`terminated; and
`
`FURTHER ORDERED that the Joint Request is granted, and the
`Settlement Agreement shall be kept separate from the file of Patent
`7,868,880, and made available only to Federal Government agencies on
`written request, or to any person on a showing of good cause, pursuant to
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`
`
`
`
`3
`
`
`
`IPR2021-00591
`Patent 7,868,880 B2
`
`For PETITIONER:
`Nicholas Whilt
`Ryan Yagura
`Brian Cook
`Ben Haber
`Mark Liang
`O’MELVENY & MYERS LLP
`nwhilt@omm.com
`ryagura@omm.com
`bcook@omm.com
`bhaber@omm.com
`mliang@omm.com
`
`For PATENT OWNER:
`Neil Rubin
`Philip Wang
`RUSS AUGUST & KABAT
`nrubin@raklaw.com
`pwang@raklaw.com
`
`
`
`
`
`4
`
`
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