`
`
`
`PGR 2017-0010
`U.S. Patent 9,326,381
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`AVX CORPORATION
`Petitioner
`v.
`
`SAMSUNG ELECTRO-MECHANICS CO., LTD.
`Patent Owner
`_____________________________
`
`Case No. PGR2017-00010
`Patent No. 9,326,381
`_____________________________
`
`
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 327 AND 37 C.F.R. § 42.72
`
`_____________________________
`
`
`
`
`PGR 2017-0010
`U.S. Patent 9,326,381
`
`Pursuant to 35 U.S.C. § 327, 37 C.F.R. § 42.72, and the Board’s Order
`
`entered January 30, 2018, Patent Owner Samsung Electro-Mechanics Co., Ltd.
`
`(“SEM”) and Petitioner AVX Corporation (“AVX”) (collectively, the “Parties”)
`
`jointly request termination of post-grant review no. 2017-00010.
`
`The Parties have executed a settlement agreement that resolves their dispute
`
`regarding U.S. Pat. No. 9,326,381 (“the ’381 Patent”). Pursuant to 37 C.F.R.
`
`§ 42.74(b), the Parties’ settlement agreement is in writing, and a true and
`
`unredacted copy is filed herewith as Exhibit 1029. There are no other agreements
`
`or understandings between
`
`the parties made
`
`in connection with, or
`
`in
`
`contemplation of, the termination of this proceeding. Pursuant to 37 C.F.R.
`
`§ 42.74(b) , 35 U.S.C. § 327(b) , and the Board’s Order (Paper 22), a joint motion
`
`to treat the settlement as business confidential information and to keep it separate
`
`is filed herewith.
`
`I.
`
`Background
`
`On January 26, 2017, AVX filed a Petition for post-grant review of claims
`
`1–19 of the ’381 Patent. Paper No. 2. On May 5, 2017, SEM filed a Preliminary
`
`Response. Paper No. 6. On July 18, 2017, the Board instituted trial as to claims
`
`1–4, 6–11, and 13–19 of the ’381 Patent. Paper No. 11. On September 29, 2017,
`
`SEM filed its Response to the Petition. Paper No. 16. Petitioner has not yet filed
`
`its Reply and the Board has not heard oral argument.
`
`
`
`- 1 -
`
`
`
`PGR 2017-0010
`U.S. Patent 9,326,381
`
`On January 29, 2018, the Parties informed the Board of their settlement
`
`agreement and sought authorization to file the present motion. The Board granted
`
`authorization on January 30, 2018. Paper No. 22.
`
`II. Termination as to Patent Owner and Petitioner is Appropriate
`
`Termination of this post-grant review is appropriate because the Board has
`
`not yet “decided the merits of the proceeding.” 35 U.S.C. § 327(a); see also Office
`
`Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). Briefing
`
`has not been completed, because Petitioner has not yet filed its Reply brief.
`
`Furthermore, the oral hearing has not yet been conducted.
`
`The Parties have entered into a settlement agreement and no dispute remains
`
`between them involving the ’381 Patent. There are no other Board proceedings
`
`involving the ’381 Patent and there is no litigation involving the ’381 Patent. AVX
`
`is the sole Petitioner in this proceeding.
`
`III. Conclusion
`
`For the foregoing reasons, Patent Owner and Petitioner jointly request that
`
`the Board terminate this post-grant review proceeding.
`
`
`
`- 2 -
`
`
`
`PGR 2017-0010
`U.S. Patent 9,326,381
`
`
`
`
`
`
`/Michael R. Houston/
`Michael Houston
`Reg. No. 58,486
`Foley & Lardner LLP
`E-Mail: MHouston@foley.com
`
`Nicholas M. Lagerwall
`Reg. No. 63,272
`Foley & Lardner LLP
`E-Mail: nlagerwall@foley.com
`
`Attorneys for Petitioner
`AVX Corporation
`
`Respectfully submitted,
`
`/Michael R. Houston for Hosang Lee/
`Hosang Lee (Reg. No. 69,333)
`Alexander P. Ott (Reg. No. 63,110)
`McDermott Will & Emery
`500 North Capitol Street, N.W.
`Washington, DC 20001
`T: (202) 756-8000
`F: (202) 756-8087
`
`
`
`Attorneys for Patent Owner
`Samsung Electro-Mechanics Co., Ltd.
`
`Date: February 5, 2018
`
`
`
`
`
`
`
`
`
`
`
`
`
`- 3 -
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`
`
`PGR 2017-0010
`U.S. Patent 9,326,381
`
`CERTIFICATE OF SERVICE
`
`In accordance with 37 C.F.R. § 42.6(e), the undersigned certifies that on
`
`February 5, 2018, a complete and entire copy of the foregoing was provided via
`
`electronic mail to the following attorneys of record for patent owner:
`
`Hosang Lee HLee@mwe.com
`Bernard J. Knight BKnight@mwe.com
`Alexander P. Ott AOtt@mwe.com
`
`Dated: February 5, 2018
`
`By:
`
`/Michael R. Houston/
`
`Respectfully submitted,
`
`Michael Houston
`Reg. No. 58,486
`Foley & Lardner LLP
`E-Mail: MHouston@foley.com
`
`Nicholas M. Lagerwall
`Reg. No. 63,272
`Foley & Lardner LLP
`E-Mail: nlagerwall@foley.com
`
`
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