IQE, PLC

Patent Trials and Appeals Board

Mar 10, 2021

DER2018-00019 (P.T.A.B. Mar. 10, 2021)

Trials@uspto.gov Paper 17
Tel: 571-272-7822 Entered: March 10, 2021
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

ARRAY PHOTONICS, INC.1,
Petitioner Application No. 16/132,059,
v.
IQE, PLC,
Respondent Patent No. 9,768,339 B2,
Respondent.

Case DER2018-00019

Before JONI Y. CHANG, JOSIAH C. COCKS, and JUSTIN T. ARBES,
Administrative Patent Judges.

CHANG, Administrative Patent Judge.

DECISION
Settlement Prior to Institution of Trial
37 C.F.R. § 42.74

1 Petitioner changed its name from “Solar Junction Corporation” to “Array
Photonics, Inc.” Paper 8 (Petitioner’s Updated Mandatory Notices).
DER2018-00019
Petitioner Application No. 16/132,059
Respondent Patent No. 9,768,339 B2

2
Petitioner and Respondent jointly move to terminate this derivation
proceeding in light of their settlement that resolves their disputes regarding
the application and patent at issue. Paper 14 (“Mot.”). The parties request
that the Board terminate this proceeding in its entirety. Id. at 3.
In support of their Motion to Terminate Proceeding, the parties filed a
true copy of their Settlement Agreement made in connection with, or in
contemplation of, the termination as required by 35 U.S.C. § 135(e) and
37 C.F.R. § 42.74(b). Ex. 1074. Pursuant to 35 U.S.C. § 135(e) and 37
C.F.R. § 42.74(c), the parties also filed a joint request to treat the Settlement
Agreement as business confidential information kept separate from the files
of the involved application and patent. Paper 15.
Generally, the Board expects that a proceeding will terminate after the
filing of a settlement agreement. See Consolidated Trial Practice Guide2 at
86; see also 84 Fed. Reg. 64,280 (Nov. 21, 2019). Here, the parties indicate
that, “[p]ursuant to the Settlement Agreement, the parties stipulated to
dismiss the two District Court actions on February 18, 2021, and the Court
entered the parties’ stipulation on February 19, 2021.” Mot. 1−2.
The parties also indicate that “[t]here are no pending litigation matters
between the parties” and that “[t]here are no collateral agreements between
the parties.” Id. Moreover, this proceeding is in an early stage. We have
not yet determined whether a trial should be instituted in this proceeding.
Upon review of the procedural posture of this proceeding and the facts
before us, we determine that the parties’ request has merit and that it is
appropriate to terminate this proceeding. See 37 C.F.R. §§ 42.2, 42.72.

2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
DER2018-00019
Petitioner Application No. 16/132,059
Respondent Patent No. 9,768,339 B2

3

ORDER
In consideration of the foregoing, it is hereby
ORDERED that the parties’ Joint Motion to Terminate Proceeding is
granted; and
FURTHER ORDERED that the parties’ Joint Request to File
Settlement Agreement as Business Confidential Information and to keep
such settlement agreement separate from the files of the involved application
and patent, and to make it 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. § 135(e) and 37 C.F.R. § 42.74(c), is granted.

DER2018-00019
Petitioner Application No. 16/132,059
Respondent Patent No. 9,768,339 B2

4
For PETITIONER:

Mehran Arjomand
Jean Nguyen
MORRISON & FOERSTER LLP
marjomand@mofo.com
jnguyen@mofo.com

For PATENT OWNER:

Edward Kelly
Scott McKeown
ROPES & GRAY LLP
edward.kelly@ropesgray.com
scott.mckeown@ropesgray.com