SPEX Technologies, Inc.

Patent Trials and Appeals Board

Nov 9, 2020

IPR2017-01021 (P.T.A.B. Nov. 9, 2020)

Trials@uspto.gov Paper No. 46
571-272-7822 Date: November 9, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

KINGSTON TECHNOLOGY COMPANY, INC.,
Petitioner,

v.

SPEX TECHNOLOGIES, INC.,
Patent Owner.
____________

IPR2017-01021
Patent 6,003,135
____________

Before LYNNE E. PETTIGREW, CHARLES J. BOUDREAU, and
NORMAN H. BEAMER, Administrative Patent Judges.

BOUDREAU, Administrative Patent Judge.

TERMINATION
Due to Settlement on Remand
35 U.S.C. § 317; 37 C.F.R. § 42.74

IPR2017-01021
Patent 6,003,135
2
This case is before us on remand from the U.S. Court of Appeals for
the Federal Circuit. Kingston Tech. Co. v. SPEX Techs., Inc., 798 F. Appx.
629 (Fed. Cir. 2020). On November 5, 2020, with our authorization, the
parties filed a “Joint Motion to Terminate Pursuant to 35 U.S.C. § 317 and
Joint Request to Keep Separate Pursuant to [35] U.S.C. § 317(b) and
37 C.F.R. § 42.74.” Paper 45 (“Motion”). The parties represent in the
Motion that they “have settled with respect to [U.S. Patent No. 6,003,135
(“the ’135 patent”)] and have reached agreement to terminate this IPR,” that
“[t]he settlement agreement between the parties has been made in writing,”
that “a true and correct copy of the settlement agreement . . . will be filed
with this request as Exhibit 3001,” and that “[t]he parties have filed a copy
of the settlement agreement with the Board, as required by 35 U.S.C.
§ 317(b) and 37 C.F.R. § 42.74.” Motion 1, 3, 4.1 Indeed, a copy of the
parties’ settlement agreement, labeled as “Exhibit 3001,” was filed along
with the Motion as Exhibit 2005 in the record of this case.
The parties have not identified any other proceedings currently
pending before the Office involving challenges to the subject ’135 patent,
and the parties further indicate in the Motion that “[n]o other party’s rights
will be prejudiced by the termination of this inter partes review” and that
“[t]he District court in the action of SPEX Technologies, Inc. v. Kingston
Technology Corporation, et al., Case No. 8:16-cv-1790 . . . pending in the
Central District of California has dismissed the claims that relate to the
’135 patent.” Motion 3.

1 The Motion does not include page numbers. We reference page numbers
with page 1 being the first page after the title page.
IPR2017-01021
Patent 6,003,135
3
Under the present circumstances, we determine that it is appropriate to
terminate this proceeding without rendering a final written decision on
remand pursuant to 35 U.S.C. § 318(a). See 35 U.S.C. § 317; 37 C.F.R.
§§ 42.72, 42.74. We also grant the parties’ request to treat the settlement
agreement as business confidential information to be kept separate from the
files of this proceeding and the files of the ’135 patent. Motion 3.

ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Joint Motion to Terminate Pursuant to 35 U.S.C.
§ 317 and Joint Request to Keep Separate Pursuant to [35] U.S.C. § 317(b)
and 37 C.F.R. § 42.74 is granted;
FURTHER ORDERED that this proceeding is accordingly terminated
as to all parties; and
FURTHER ORDERED that Exhibit 2005 is accordingly to be kept
separate from the file of the involved U.S. Patent No. 6,003,135 under the
provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).

IPR2017-01021
Patent 6,003,135
4
For PETITIONER:

David Hoffman
FISH & RICHARDSON P.C.
hoffman@fr.com

Martha Hopkins
LAW OFFICES OF S. J. CHRISTINE YANG
mhopkins@sjclawpc.com

For PATENT OWNER:

Philip X. Wang
Kent Shum
RUSS AUGUST & KABAT
pwang@raklaw.com
kshum@raklaw.com