Seoul Semiconductor Co., Ltd.

Patent Trials and Appeals Board

Feb 8, 2022

IPR2021-00230 (P.T.A.B. Feb. 8, 2022)

Trials@uspto.gov Paper No. 33 571.272.7822 Entered: February 8, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ SATCO PRODUCTS, INC., Petitioner, v. SEOUL SEMICONDUCTOR CO., LTD., Patent Owner. ____________ IPR2021-00230 Patent 7,646,031 B2 ____________ Before ERICA A. FRANKLIN, JEFFREY W. ABRAHAM, and ELIZABETH M. ROESEL, Administrative Patent Judges. ROESEL, Administrative Patent Judge. TERMINATION Due to Settlement After Institution of Trial and Granting Joint Request that the Settlement Agreement Be Kept Separate and Treated as Business Confidential Information 35 U.S.C. § 317; 37 C.F.R. § 42.74 IPR2021-00230 Patent 7,646,031 B2 2 I. INTRODUCTION Petitioner and Patent Owner (collectively “the Parties”) have requested that the above-identified inter partes review proceeding be terminated pursuant to a settlement. On February 1, 2022, the Parties filed a Joint Motion to Terminate Proceeding (“Joint Motion”) in the above- identified proceeding. Paper 32, 1-3. The Parties also filed a copy of a settlement agreement (Ex. 1044, “Settlement Agreement”) and made a Joint Request that the Submitted Settlement Agreement Be Kept Separate and Treated as Business Confidential Information Pursuant to 35 U.S.C. § 317(b) (Paper 32, 3, “Joint Request”) in the proceeding. 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 inter partes review proceeding, that the filed copy of the Settlement Agreement is a true copy, and that, aside from the filed copy, “there are no collateral agreements or understandings made in connection with, or in contemplation of, the termination of the present inter partes review.” Paper 32, 1. We instituted trial in the above-identified proceeding. See Paper 10. The trial is still at an early stage. An oral hearing has not yet been held, we have not yet decided the merits of the proceeding, and a final written decision has not yet been entered. Under these circumstances and in view of IPR2021-00230 Patent 7,646,031 B2 3 the Parties’ settlement, we determine that good cause exists to terminate the proceeding. The Parties request that the Settlement Agreement be treated as business confidential information and be kept separate from the file of Patent 7,646,031 B2. Paper 32, 3. After reviewing the Settlement Agreement, we determine that good cause exists to treat the Settlement Agreement as business confidential information 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 IPR2021-00230 is terminated with respect to Petitioner and Patent Owner, pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72; and FURTHER ORDERED that the Joint Request is granted, and the Settlement Agreement shall be kept separate from the file of Patent 7,646,031 B2, 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). IPR2021-00230 Patent 7,646,031 B2 4 For PETITIONER: Heath Briggs Barry Schindler Andrew Sommer Joshua Raskin Julie Bookbinder GREENBERG TRAURIG LLP briggsh@gtlaw.com schindlerb@gtlaw.com sommera@gtlaw.com raskinj@gtlaw.com bookbinderj@gtlaw.com For PATENT OWNER: Charles Sanders Jonathan Strang Emre B. Yuzak LATHAM & WATKINS LLP charles.sanders@lw.com jonathan.strang@lw.com emre.yuzak@lw.com Michael Eisenberg STEPTOE & JOHNSON LLP meisenberg@steptoe.com