Solas OLED Ltd.

Patent Trials and Appeals BoardMar 11, 2021

IPR2020-01059 (P.T.A.B. Mar. 11, 2021)

Trials@uspto.gov Paper 9 571-272-7822 Entered: March 11, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD SAMSUNG DISPLAY CO., LTD., DELL, INC., and APPLE INC., Petitioner, v. SOLAS OLED LTD., Patent Owner. IPR2020-001401 Patent 6,072,450 APPLE INC., Petitioner, v. SOLAS OLED LTD., Patent Owner. IPR2020-01059 Patent 6,072,450 Before SALLY C. MEDLEY, JESSICA C. KAISER, and JULIA HEANEY, Administrative Patent Judges. HEANEY, Administrative Patent Judge. 1 Apple Inc., which filed a petition in IPR2020-01059, has been joined as a petitioner in IPR2020-00140. IPR2020-00140 IPR2020-01059 Patent 6,072,450 2 ORDER Settlement as to Dell, Inc. and Apple Inc. Termination Due to Settlement After Institution of Trial 35 U.S.C. § 317; 37 C.F.R. § 42.74 I. INTRODUCTION Samsung Display Co., Ltd. (“Samsung”) and Dell, Inc. (“Dell) filed a Petition seeking institution of an inter partes review of claims 1–9, 11–13, and 15–18 of U.S. Patent No. 6,072,450 (Ex. 1001, “the ’450 patent”). Paper 1.2 After reviewing the Petition (Paper 1) and Patent Owner’s preliminary response (Paper 7), we instituted an inter partes review. Paper 9. After institution, Apple Inc. (“Apple”), filed a petition and a joinder motion in IPR2020-01059, requesting that Apple be joined as a petitioner in IPR2020-00140. Apple Inc. v. Solas OLED, Ltd., IPR2020-01059, Paper 1 (petition), Paper 3 (joinder motion). After considering the parties’ papers, we instituted trial in IPR2020-01059, granted Apple’s joinder motion, and added Apple as a petitioner to IPR2020-00140. Apple Inc. v. Solas OLED, Ltd., IPR2020-01059, Paper 8 (Institution Decision). In addition, we entered a copy of that decision in IPR2020-00140. Paper 27. On March 3, 2021, pursuant to our authorization, Petitioner Dell, Petitioner Apple, and Patent Owner Solas OLED, Ltd. (“Solas”) filed a Joint Motion to Terminate as to Petitioner Dell and Petitioner Apple. Paper 44 (“Motion” or “Mot.”). Dell, Apple, and Solas also filed a copy of settlement 2 Unless otherwise indicated, all Paper numbers referenced herein refer to IPR2020-00140. IPR2020-00140 IPR2020-01059 Patent 6,072,450 3 agreements (Ex. 2009, Dell; Ex. 2010, Apple), along with an authorized joint request to treat the settlement agreement as business confidential information and to keep it separate under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (Paper 45). In the Motion, Dell, Apple and Solas state that they have settled their dispute with respect to IPR2020-00140, that Apple and Solas have settled their dispute with respect to IPR2020-01059, and that the related district court litigations styled Solas OLED Ltd. v. Dell Technologies Inc., 6:19-cv- 00514-ADA (W.D. Tex.) and Solas OLED Ltd. v. Apple Inc., 6:19-cv- 00537-ADA (W.D. Tex.) have been dismissed. Mot. 3. They also submit that each of Confidential Exhibit 2009 and Confidential Exhibit 2010 is a true copy of the respective settlement agreement and there are no collateral agreements made in connection with, or in contemplation of, the termination of the inter partes review. Id. at 1. 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.” Any agreement or understanding “made in connection with, or in contemplation of, the termination of an inter partes review” must be in writing, and a true copy of any such documents must be filed in the Office before termination. Id. § 317(b); accord 37 C.F.R. § 42.74(b). Because the moving parties (Dell, Apple, and Solas) represent that they have complied with the applicable requirements, we terminate the inter partes review with respect to Petitioner Dell and Petitioner Apple. See IPR2020-00140 IPR2020-01059 Patent 6,072,450 4 35 U.S.C. § 317(a); 37 C.F.R. § 42.74. We also grant the parties’ request to treat the settlement agreements (Exhibit 2009, Exhibit 2010) as business confidential information. See 35 U.S.C. § 317(b); 37 C.F.R. § 42.74(c). Samsung, an original Petitioner in IPR2020-00140, is not a party to the settlement agreements and did not join the Motion. Accordingly, IPR2020-00140 remains pending as to Petitioner Samsung Display Co., Ltd. ORDER Accordingly, it is: ORDERED that the Joint Motion to Terminate with respect to Dell and Apple is granted in IPR2020-00140; FURTHER ORDERED that the case caption for future submissions in IPR2020-00140 shall not list Dell and Apple as petitioners; FURTHER ORDERED that the settlement agreements (Exhibit 2009, Exhibit 2010) be treated as business confidential information and be kept separate from the files of the involved U.S. Patent No. 6,072,450; FURTHER ORDERED this paper does not constitute a final written decision pursuant to 35 U.S.C. § 318(a); and FURTHER ORDERED that IPR2020-01059 be terminated under 37 C.F.R. § 42.72. IPR2020-00140 IPR2020-01059 Patent 6,072,450 5 PETITIONER: David A. Garr Grant Johnson Peter P. Chen COVINGTON & BURLING LLP dgarr@cov.com gjohnson@cov.com pchen@cov.com Adam P. Seitz Paul R. Hart ERISE IP, P.A. adam.seitz@eriseip.com paul.hart@eriseip.com PATENT OWNER: Neil A. Rubin Reza Mirzaie RUSS AUGUST & KABAT nrubin@raklaw.com rmirzaie@raklaw.com Philip Wang Neil A. Rubin Reza Mirzaie Kent N. Shum RUSS AUGUST & KABAT pwang@raklaw.com nrubin@raklaw.com rmirzaie@raklaw.com kshum@raklaw.com