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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`
`SAMSUNG DISPLAY CO., LTD.,
`Petitioner
`
`v.
`
`JOLED INC.,
`Patent Owner
`
`
`Case No. IPR2021-00677
`Patent No. 10,198,992
`
`JOINT MOTION TO TERMINATE PROCEEDING
`AND
`JOINT REQUEST TO TREAT SETTLEMENT AGREEMENT
`AS BUSINESS CONFIDENTIAL INFORMATION
`
`
`
`
`
`
`
`
`IPR2021-00677
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`Pursuant to 35 U.S.C. § 317, 37 C.F.R. §§ 42.72 and 42.74, and the
`
`Board’s authorization of April 30, 2021, Petitioner Samsung Display Co., Ltd.
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`and Patent Owner JOLED Inc. jointly move to terminate the present inter
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`partes review proceeding in light of the settlement of their dispute regarding
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`U.S. Patent No. 10,198,992 (“the ’992 patent”); and jointly request to treat as
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`business confidential information the copy of the settlement agreement filed
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`along with this paper (Confidential Exhibit 1029).
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`I.
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`PROCEDURAL BACKGROUND
`This proceeding is in its preliminary phase, as the Board has yet to issue
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`a decision on institution. The Petition was filed on March 23, 2021. Paper
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`No. 1. Patent Owner’s preliminary response is due on September 26, 2021.
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`Paper No. 3.
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`On April 27, 2021, Petitioner and Patent Owner entered into a
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`settlement agreement that resolves their dispute regarding the ’992 patent. See
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`Confidential Exhibit 1029. The parties contacted the Board the next day by
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`email, to request authorization to file a joint motion to terminate and joint
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`request to file the settlement agreement as business confidential information.
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`The Board authorized these filings in a responsive email on April 30, 2021.
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`1
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`
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`II.
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`
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`IPR2021-00677
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`JOINT MOTION TO TERMINATE THE PROCEEDING
`Petitioner and Patent Owner jointly request that this inter partes review
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`be terminated, in light of the settlement of their dispute regarding the ’992
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`patent.
`
`Under 37 C.F.R. § 42.72, “[t]he Board may terminate a trial without
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`rendering a final written decision, where appropriate, including . . . pursuant
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`to a joint request under 35 U.S.C. 317(a) or 327(a).” See also 37 C.F.R.
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`§ 42.74 (“[t]he parties may agree to settle any issue in a proceeding . . .”).
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`Additionally, under 35 U.S.C. § 317(a), “[a]n inter partes review instituted
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`under this chapter shall be terminated with respect to any petitioner upon the
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`joint request of the petitioner and the patent owner, unless the Office has
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`decided the merits of the proceeding before the request for termination is
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`filed.” As the Board has explained:
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`There are strong public policy reasons to favor settlement
`between the parties to a proceeding. . . . The Board expects that
`a proceeding will terminate after the filing of a settlement
`agreement, unless the Board has already decided the merits of
`the proceeding. 35 U.S.C. §§ 317(a), 327.
`
`Consolidated Trial Practice Guide (November 2019), page 86, § II.N.
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`2
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`
`
`
`
`
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`IPR2021-00677
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`Termination of the present inter partes review is appropriate because
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`the moving parties have settled their dispute regarding the ’992 patent and the
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`Board has not yet decided the merits of the proceeding.
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`A true and complete copy of the settlement agreement is being filed
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`along with this paper, consistent with the requirements of 35 U.S.C. § 317(b)
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`and 37 C.F.R. § 42.74(b). See Confidential Exhibit 1029. The parties certify
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`that there are no other agreements or understandings between the parties,
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`including any collateral agreements, made in connection with, or in
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`contemplation of, the termination of this proceeding.1
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`Therefore, Petitioner and Patent Owner respectfully submit that this
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`motion to terminate the proceeding should be granted.
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`1 Although the settlement agreement of Confidential Exhibit 1029 anticipates
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`that the parties will subsequently enter into another agreement, no such other
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`agreement has been entered into as of this date. Therefore, the Parties submit
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`that they have complied with the requirements of 35 U.S.C. § 317(b) and 37
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`C.F.R. § 42.74(b), given that Confidential Exhibit 1029 fully comprises the
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`binding settlement agreement pursuant to which the parties are requesting
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`termination.
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`3
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`IPR2021-00677
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`III. JOINT REQUEST TO TREAT SETTLEMENT AGREEMENT
`AS BUSINESS CONFIDENTIAL INFORMATION
`Petitioner and Patent Owner further jointly request that the settlement
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`agreement filed as Confidential Exhibit 1029 be treated as business
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`confidential information and be kept separate from the publicly available files
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`of the involved patent.
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`35 U.S.C. § 317(b) provides that:
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`At the request of a party to the proceeding, the agreement or
`understanding shall be
`treated as business confidential
`information, shall be kept separate from the file of the involved
`patents, and shall be made available only to Federal Government
`agencies on written request, or to any person on a showing of
`good cause.
`
`Likewise, 37 C.F.R. § 42.74(c) provides that:
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`A party to a settlement may request that the settlement be treated
`as business confidential information and be kept separate from
`the files of an involved patent or application. The request must
`be filed with the settlement. If a timely request is filed, the
`settlement shall only be available:
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`(1) To a Government agency on written request to the Board; or
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`(2) To any other person upon written request to the Board to
`make the settlement agreement available, along with the fee
`specified in § 42.15(d) and on a showing of good cause.
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`4
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`IPR2021-00677
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`The present request, which is being filed along with the Settlement
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`Agreement, is timely and in accordance with the foregoing authority.
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`Therefore, Petitioner and Patent Owner respectfully submit that this
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`request for confidential treatment should be granted.
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`
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`Date: April 30, 2021
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`
`
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`
`
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`Respectfully submitted,
`
`
`/David A. Garr/
`David A. Garr (Reg. No. 74,932)
`dgarr@cov.com
`COVINGTON & BURLING LLP
`One CityCenter, 850 Tenth Street NW
`Washington, DC 20001
`Tel: (202) 662-5250
`
`Lead Counsel for Petitioner Samsung
`Display Co., Ltd.
`
`/Diek O. Van Nort/
`Diek O. Van Nort (Reg. No. 60,777)
`DVanNort@mofo.com
`MORRISON @ FOERSTER LLP
`425 Market Street
`San Francisco, CA 94105
`Tel: (415) 268-6971
`
`Lead Counsel for Patent Owner JOLED
`Inc.
`
`
`
`5
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`
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`
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6, I hereby certify that the foregoing Joint
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`Motion to Terminate Proceeding and Joint Request to Treat Settlement
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`Agreement as Business Confidential Information was served by electronic
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`mail, on the following counsel of record for Patent Owner:
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`Diek O. Van Nort, DVanNort@mofo.com
`Alex S. Yap, AYap@mofo.com
`David L. Fehrman, Dfehrman@dsa-legal.com
`Vincent J. Belusko, VBelusko@mofo.com
`JOLED-SAMSUNG-IPR@mofo.com
`Dfehrman@dsa-legal.com
`
`
`Date: April 30, 2021
`
`
`
`/David A. Garr/
`David A. Garr (Reg. No. 74,932)
`
`
`
`
`
`
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