Kokusai Electric Corporation v. ASM IP Holding B.V.

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Trials@uspto.gov 	Paper 38
571-272-7822 	Entered: August 20, 2019
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
KOKUSAI ELECTRIC CORPORATION,
Petitioner,
v.
ASM IP HOLDING B.V.,
Patent Owner.
Case IPR2018-01151
Patent 7,537,662 B2
Before MICHAEL P. TIERNEY, Vice Chief Administrative Patent Judge,
DONNA M. PRAISS and CHRISTOPER L. CRUMBLEY, Administrative
Patent Judges.
PRAISS, Administrative Patent Judge.
ORDER
Termination of the Proceedings
35 U.S.C. § 317(a)

IPR2018-01151
Patent 7,537,662 B2
On July 12, 2019, the parties filed a Joint Motion to Terminate
pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74. Paper 37. With the
motion to terminate, the parties filed a copy of a written settlement
agreement (Ex. 2012) along with a Joint Request to File Settlement
Agreement as Business Confidential Information and to Keep it Separate
from the Patent Files pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74
(Paper 36). We authorized the filing of these papers in an e-mail dated July
10, 2019.
The parties’ Joint Motion to Terminate this proceeding additionally
requests that the Board “grant-in-part the pending unopposed Motion to
Amend (Paper 17).” Paper 37, 1. The Joint Motion to Terminate clarifies
that Petitioner filed an Opposition to the Motion to Amend (Paper 26), but
agreed to withdraw its opposition to the Motion to Amend as part of the
terms of the Settlement Agreement (Ex. 2012, Section 3.1 (c)). Paper 37, 3.
With that explanation, the parties characterize the pending Motion to Amend
as “now unopposed” and request the Board to grant-in-part the Motion to
Amend by granting the portion of the Motion to Amend that requests
replacement of canceled claims 1, 3, 4, 9, 11, 12, 18, 20, 24–27 with
proposed substitute claims 44, 47, 49–50, 53, 55–56, and 58–62. Id.;
Paper 17, 1.
The panel held a conference with the parties’ counsel on July 29,
2019, to discuss the basis for and implications of the parties’ request that we
“grant-in-part the Motion to Amend.” During the conference, counsel
asserted that the Board has authority to decide a motion to amend before
terminating a proceeding pursuant to 37 C.F.R. §§ 42.71(a) and 42.72 and
35 U.S.C. § 317(a). Counsel also asserted that Title 35 envisions that the
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Patent 7,537,662 B2
Board may permit, and then decide, an additional motion to amend to
“materially advance the settlement of a proceeding” pursuant to
35 U.S.C. § 316(d)(2). During the conference, counsel confirmed that
(1) the parties’ Settlement Agreement is not contingent on the Motion to
Amend being decided, (2) the parties’ joint request to terminate the
proceeding is not contingent on the Motion to Amend being decided, and
(3) termination of the proceeding without a final written decision is sought
by the parties. The only reason identified by the parties for seeking a partial
decision on the pending Motion to Amend to add the proposed substitute
claims to Patent No. 7,537,662 B2, rather than pursuing those claims in a
reissue application or request for reexamination, was efficiency in terms of
the proposed claims having been presented in the Motion to Amend filed in
this proceeding.
Generally, the Board expects that a proceeding will terminate after the
filing of a settlement agreement. See, e.g., Office Patent Trial Practice
Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). We instituted trial in
this proceeding on December 3, 2018. Paper 9. Although briefing by the
parties has been completed, the scheduled oral hearing is not until August
27, 2019 (Paper 10, 7) and a decision on the merits has not been reached.
The parties represent that Exhibit 2012 is a “true copy” of their settlement
agreement and that the agreement resolves the dispute in this and all other
inter partes reviews between Petitioner and Patent Owner, as well as the
related district court litigations between Petitioner and Patent Owner.
Paper 37, 1. They also represent that “[t]here are no other agreements, oral
or written, between the parties made in connection with, or in contemplation
of, the termination of this proceeding.” Id. at 1–2.
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Patent 7,537,662 B2
Given the parties’ joint request, we must terminate the proceeding
with respect to Petitioner unless we have decided the merits of the
proceeding. See 35 U.S.C. § 317(a) (“An 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.”). 	In
addition, “[i]f no petitioner remains in the inter partes review, the Office
may terminate the review or proceed to a final written decision.” Id. Based
on the facts of this case, we determine that it is appropriate to terminate this
proceeding without rendering a final written decision or a decision on the
Motion to Amend. Our reasoning is set forth below.
Although the Motion to Amend has been fully briefed (Papers 17, 26,
32), the parties contend that we may simply enter the amended claims
because Petitioner has withdrawn its opposition (Paper 37, 3). A decision on
Patent Owner’s Motion to Amend, however, requires a determination as to
the patentability of the substitute claims. 35 U.S.C. § 318(a) (“If an inter
partes review is instituted and not dismissed under this chapter, the Patent
Trial and Appeal Board shall issue a final written decision with respect to
the patentability of any patent claim challenged by the petitioner and any
new claim added under section 316(d)”); 37 C.F.R. § 42.121 (“A motion to
amend may be denied where: (i) The amendment does not respond to a
ground of unpatentability involved in the trial”).
Therefore, the fact that Petitioner has withdrawn its opposition as a
consequence of the settlement of this proceeding does not remove the issue
of patentability of the “non-contingent” substitute claims in deciding Patent
Owner’s Motion to Amend. In addition, the parties confirmed during the
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Patent 7,537,662 B2
conference call with the Board that they do not seek a decision on the
Motion to Amend if the proposed substitute claims are determined to be
unpatentable. Proceeding with an analysis of the patentability of the
proposed substitute claims in this situation would not be an efficient use of
resources.
Additionally, the Director is to issue a certificate where the Board
issues a final written decision and the time for appeal has expired or
terminated. 35 U.S.C. § 318(b). During the conference call, the parties did
not identify an explicit statutory basis for issuing a certificate absent a final
written decision. In response to questions from the Board, the parties
requested that the Board not issue a final written decision. Specifically, the
parties stated that they would rather the Board terminate the proceeding than
decide the motion to amend as part of a final written decision.
This uncertainty regarding the Office’s ability to issue amended
claims in the absence of a final written decision and trial certificate under 35
U.S.C. § 318 contrasts with the Office’s clear authority to do so through
reexamination or reissue proceedings. 	In this regard, we direct Patent
Owner’s attention to the April 2019 Notice Regarding Options for
Amendments by Patent Owner Through Reissue or Reexamination During a
Pending AIA Trial Proceeding. 77 Fed. Reg. 16655 (Apr. 22, 2019) (“The
Office will consider a reissue application or a request for reexamination any
time before, but not after, either: (1) The Office issues a certificate that
cancels all claims of a patent, e.g., a trial certificate in an AIA trial
proceeding, or (2) the U.S. Court of Appeals for the Federal Circuit
(‘‘Federal Circuit’’) issues a mandate in relation to a decision that finds all
claims of a patent are invalid or unpatentable.”).
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In light of the foregoing, the Joint Motion to Terminate is granted to
the extent that this proceeding is terminated without reaching a decision on
the Motion to Amend. This decision to terminate does not restrict Patent
Owner from filing a reissue application or a request for reexamination to
amend the claims of Patent No. 7,537,662 B2, if the application is otherwise
permitted. The Joint Request to treat the settlement agreement as business
confidential information is granted.
This Order does not constitute a final written decision pursuant to
35 U.S.C. § 318(a).
ORDER
Accordingly, it is
ORDERED that the Joint Request that the settlement agreement be
treated as business confidential information and be kept separate from the
files of the above-identified proceedings and from the files of the involved
patents under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c),
is granted;
FURTHER ORDERED that the Joint Motion to Terminate the above-
identified proceeding is granted to the extent that the proceeding is
terminated without reaching a decision on the Motion to Amend; and
FURTHER ORDERED that this proceeding is terminated with respect
to both Petitioner and Patent Owner pursuant to 35 U.S.C. § 317(a)
and 37 C.F.R. § 42.72.
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FOR PETITIONER:
Dion M. Bregman
Michael J. Lyons
Jason E. Gettleman
Alexander Stein
MORGAN, LEWIS & BOCKIUS LLP
Dion.bregman@morganlewis.com
Michael.lyons@morganlewis.com
Jason.gettleman@morganlewis.com
Alexander.stein@morganlewis.com
FOR PATENT OWNER:
Kerry S. Taylor
Adeel S. Akhtar
Nathanael R. Luman
Carol Pitzel Cruz
Nathan D. Reeves
Bridget Smith
KNOBBE, MARTENS, OLSON & BEAR, LLP
2kst@knobbe.com
2asa@knobble.com
2nrl@knobbe.com
2nrl@knobbe.com
2cmp@knobbe.com
2bzs@knobbe.com
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