Solas OLED Ltd.

Patent Trials and Appeals Board

Mar 12, 2021

IPR2020-01275 (P.T.A.B. Mar. 12, 2021)

Trials@uspto.gov Paper No. 8
571-272-7822 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

2

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

I. INTRODUCTION
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.
IPR2020-00320
IPR2020-01275
Patent 7,446,338 B2

3

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).
IPR2020-00320
IPR2020-01275
Patent 7,446,338 B2

4

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.

IPR2020-00320
IPR2020-01275
Patent 7,446,338 B2

5

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