Rohm and Haas Electronic Materials Korea, Ltd.v.Idemitsu Kosan Co., Ltd.

Patent Trial and Appeal Board

Jun 25, 2015

13484854 (P.T.A.B. Jun. 25, 2015)

Trials@uspto.gov Paper 8
Tel: 571-272-7822 Entered: June 25, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

ROHM AND HAAS ELECTRONIC MATERIALS KOREA, LTD.,
Petitioner,

v.

IDEMITSU KOSAN CO., LTD.,
Patent Owner.
____________

Case IPR2015-00796 (Patent 8,685,543 B2)
Case IPR2015-00797 (Patent 8,652,654 B2)1
____________

Before GRACE KARAFFA OBERMANN, BRIAN P. MURPHY, and
JEFFREY W. ABRAHAM, Administrative Patent Judges

ABRAHAM, Administrative Patent Judge.

ORDER
Dismissing the Petitions
37 C.F.R. §§ 42.5(a), 42.71(a)

1 This order addresses motions to terminate based on a settlement agreement
that resolves both cases. We, therefore, exercise our discretion to issue a
single order to be entered in each case. The parties are not authorized to use
this style heading in any filing.
IPR2015-00796 (Patent 8,685,543 B2)
IPR2015-00797 (Patent 8,652,654 B2)

On June 22, 2015, the parties filed in each proceeding a Joint Motion
to Terminate. IPR 2015-00796, Paper 6; IPR 2015-00797, Paper 5. With
the Joint Motions, the parties filed a copy of a written settlement agreement
and a Joint Request to have have the settlement agreement treated as
confidential business information under 35 U.S.C. § 317(b) and 37 C.F.R.
§ 42.74(c). IPR 2015-00796, Paper 7 and Ex. 1013; IPR 2015-00797, Paper
6 and Ex. 1015.
These proceedings are at an early stage. Patent Owner has not yet
filed a Preliminary Response in either proceeding and the Board has not yet
determined whether to institute trial. The parties indicate that they have
agreed to resolve their dispute related to the challenged patents. See, e.g.,
IPR 2015-00796, Paper 6 at 2. Under these circumstances, we determine
that it is appropriate to dismiss each petition. See 37 C.F.R. §§ 42.5(a),
42.71(a). This paper does not constitute a final written decision pursuant to
35 U.S.C. § 318(a).

In view of the foregoing, it is
ORDERED that the Petitions are dismissed;
FURTHER ORDERED that the parties’ Joint Requests to have their
settlement agreement treated as business confidential information, to be kept
separate from the patent file, are granted.

IPR2015-00796 (Patent 8,685,543 B2)
IPR2015-00797 (Patent 8,652,654 B2)

PETITIONER:
Brian Ferguson
Megan Wantland
WEIL, GOTSHAL & MANGES LLP
brian.ferguson@weil.com
Megan.wantland@weil.com

PATENT OWNER:
Richard D. Kelly
Jacob A. Doughty
Yuki Onoe
Scott A. McKeown
OBLON, McCLELLAND, MAIER & NEUSTADT, L.L.P.
CPDocketRKelly@oblon.com
CPDocketDoughty@oblon.com
CPDocketOnoe@oblon.com
CPDocketMcKeown@oblon.com

George Quillin
Benjamin Berkowitz
Michael Kaminski
FOLEY & LARDNER LLP
gquillin@foley.com
bberkowitz@foley.com
mkaminski@foley.com