ProMOS Technologies, Inc.

Patent Trials and Appeals Board

Jun 18, 2020

IPR2019-00784 (P.T.A.B. Jun. 18, 2020)

Trials@uspto.gov Paper: 25
Tel: 571-272-7822 Entered: June 18, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

SAMSUNG ELECTRONICS CO., LTD.,
Petitioner,
v.
PROMOS TECHNOLOGIES, INC.,
Patent Owner.

IPR2019-00779 (Patent 6,163,492)
IPR2019-00780 (Patent 6,163,492)
IPR2019-00781 (Patent 6,163,492)
IPR2019-00782 (Patent 5,934,974)
IPR2019-00783 (Patent 6,099,386)
IPR2019-00784 (Patent 6,469,559)
IPR2019-00785 (Patent 6,597,201)1

Before KEVIN F. TURNER, JO-ANNE M. KOKOSKI,
JOHN A. HUDALLA, JULIA HEANEY, and MATTHEW J. McNEILL,
Administrative Patent Judges.2
KOKOSKI, Administrative Patent Judge.

1 This Order addresses issues that are identical in all seven cases. We,
therefore, exercise our discretion to issue one Order to be entered in each
case.
2 This is not an Order from an expanded panel of the Board. Rather, the five
judges are paneled in various groups of three in the subject cases.
IPR2019-00779 through -00785
Patents 5,934,974; 6,099,386; 6,163,492; 6,469,559; 6,597,201

2
TERMINATION
Due to Settlement After Institution of Trial
35 U.S.C. § 317; 37 C.F.R. § 42.74

On June 16, 2020, with Board authorization, Petitioner (Samsung
Electronics Co., Ltd.) and Patent Owner (ProMOS Technologies, Inc.) filed
a Joint Motion to Terminate (Paper 25, “Joint Motion”)3 and a Joint Request
that the settlement agreement be treated as business confidential information
and be kept separate from the patent file (Paper 26, “Joint Request”), along
with a copy of the written settlement agreement (Ex. 2005, “Settlement
Agreement”), in each of the above-referenced proceedings.
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.”
Section 317(a) also provides that if no petitioner remains in the inter partes
review, the Office may terminate the review.
In the Joint Motions, the parties represent that they have reached an
agreement resolving their disputes, and that Exhibit 2005 is a true and
correct copy of their Settlement Agreement. Paper 25, 2.4 The parties
further represent that there are no other agreements between them made in
connection with the termination of the instant proceedings. Id.

3 The parties filed similar papers in each of the instant proceedings. We
refer to those filed in IPR2019-00779 for convenience.
4 The Joint Motion does not have numbered pages. We count the pages of
the Joint Motion starting from the first (title) page.
IPR2019-00779 through -00785
Patents 5,934,974; 6,099,386; 6,163,492; 6,469,559; 6,597,201

3
We instituted trial in these proceedings in September and October,
2019. Paper 7. We have not yet decided the merits of these proceedings,
and final written decisions have not yet been entered in these proceedings.
Under these circumstances, we determine it is appropriate to terminate the
proceedings with respect to both parties. Further, after reviewing the
Settlement Agreement between Petitioner and Patent Owner, we determine it
is appropriate to treat the Settlement Agreement as business confidential
information and keep it separate from the files of the patents 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).

Accordingly, it is
ORDERED that the Joint Motions to Terminate IPR2019-00779,
IPR2019-00780, IPR2019-00781, IPR2019-00782, IPR2019-00783,
IPR2019-00784, and IPR2019-00785 are granted, and these proceedings are
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 Requests to treat the Settlement
Agreement as business confidential information are granted, and the
Settlement Agreement shall be kept separate from the files of the patents
under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).

IPR2019-00779 through -00785
Patents 5,934,974; 6,099,386; 6,163,492; 6,469,559; 6,597,201

4

PETITIONER:

Naveen Modi
Joseph E. Palys
Paul M. Anderson
Chetan R. Bansal
PAUL HASTINGS LLP
naveenmodi@paulhastings.com
josephpalys@paulhastings.com
paulanderson@paulhastings.com
chetanbansal@paulhastings.com

PATENT OWNER:

Craig R. Kauffman
Kevin C. Jones
TECHKNOWLEDGE LAW GROUP LLP
ckaufman@tklg-llp.com
kjones@tklg-llp.com