JOLED INC.

Patent Trials and Appeals Board

May 19, 2021

IPR2021-00677 (P.T.A.B. May. 19, 2021)

Trials@uspto.gov Paper 7
571-272-7822 Entered: May 19, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

SAMSUNG DISPLAY CO., LTD.,
Petitioner,
v.
JOLED INC.,
Patent Owner.

IPR2021-00677
Patent 10,198,992 B2

Before SALLY C. MEDLEY, TERRENCE W. MCMILLIN, and
KEVIN C. TROCK, Administrative Patent Judges.
TROCK, Administrative Patent Judge.
DECISION
Settlement Prior to Institution of Trial
37 C.F.R. § 42.74

IPR2021-00677
Patent 10,198,992 B2
2
I. INTRODUCTION
On April 30, 2021, pursuant to our e-mail authorization, Petitioner
and Patent Owner (collectively, “the Parties”) filed a Joint Motion to
Terminate the above-identified proceeding. Paper 6 (“Joint Motion”). In
support of the Joint Motion, the Parties filed a copy of a Binding Term Sheet
agreed upon by the Parties and settling their dispute in the above-identified
proceeding. Ex. 1029 (“Settlement Agreement”). Additionally, the Joint
Motion included a Joint Request to Treat Settlement Agreement as
Confidential Business Information pursuant to § 37 C.F.R. § 42.74(c). Paper
6, 4 (“Joint Request”).
II. DISCUSSION
In the Joint Motion, the Parties represent that they have reached an
agreement to jointly seek termination of the above-identified inter partes
review proceeding, that the filed copy of the Settlement Agreement is a true
and correct copy, and that there are no other agreements or understandings
between the parties made in connection with, or in contemplation of, the
termination of this proceeding.1 Paper 6, 2–3.
This proceeding is at an early stage, and we have not yet decided
whether to institute a trial in the proceeding. In view of the early stage of
the proceeding and the settlement between the Parties, we determine that
good cause exists to terminate the proceeding with respect to the Parties.

1 The Parties state that the Settlement Agreement “anticipates that the parties
will subsequently enter into another agreement” but that “no such other
agreement has been entered into as of this date.” Paper 6, 3. As such, the
Parties represent that the Settlement Agreement “fully comprises the binding
settlement agreement pursuant to which the parties are requesting
termination.” Id.
IPR2021-00677
Patent 10,198,992 B2
3
The Parties also filed a Joint Request that the Settlement Agreement
be treated as business confidential information and be kept separate from the
file of the patent involved in this inter partes proceeding. Paper 6, 4. After
reviewing the Settlement Agreement between Petitioner and Patent Owner,
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 between Petitioner and Patent
Owner as business confidential information pursuant to 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
In consideration of the foregoing, it is hereby:
ORDERED that the Joint Motion to Terminate IPR2021-00677 is
granted and the proceeding is terminated; and
FURTHER ORDERED that the Joint Request to Treat the Settlement
agreement as Business Confidential Information is granted, and the
Settlement Agreement shall be kept separate from the files of Patent
8,950,038 B2 and made available only to Federal Government agencies on
written request, or to any person on a showing of good cause, pursuant to 37
C.F.R. § 42.74(c).
IPR2021-00677
Patent 10,198,992 B2
4
FOR PETITIONER:
David A. Garr
Peter P. Chen
Rajesh D. Paul
COVINGTON & BURLING LLP
dgarr@cov.com
pchen@cov.com
rpaul@cov.com

FOR PATENT OWNER:
Diek O. Van Nort
Alex S. Yap
Vincent J. Belusko
MORRISON & FOERSTER LLP
dvannort@mofo.com
ayap@mofo.com
vbelusko@mofo.com

David L. Fehrman
DSA LEGAL SOLUTIONS PC
dfehrman@dsa-legal.com