`Tel: 571-272-7822
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`Paper 37
`Entered: February 2, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MACRONIX INTERNATIONAL CO., LTD., MACRONIX ASIA
`LIMITED, MACRONIX (HONG KONG) CO., LTD., and
`MACRONIX AMERICA, INC.,
`Petitioner,
`
`v.
`
`SPANSION LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00103 (Patent 6,369,416 B1)
`Case IPR2014-00104 (Patent 6,459,625 B1)
`Case IPR2014-00105 (Patent 6,731,536 B1)
`Case IPR2014-01250 (Patent 6,731,536 B1)
`Case IPR2014-00108 (Patent 7,151,027 B1)
`Case IPR2014-00898 (Patent 7,151,027 B1)
`
`Before HOWARD B. BLANKENSHIP, DEBRA K. STEPHENS,
`KRISTEN L. DROESCH, JUSTIN T. ARBES, and RICHARD E. RICE,
`Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`JUDGMENT
`Termination of the Proceedings
`37 C.F.R. § 42.72
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`
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`
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`IPR2014-00103, IPR2014-00104, IPR2014-00105, IPR2014-01250,
`IPR2014-00108, IPR2014-00898
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`On January 28, 2015, the parties filed, in each of the instant
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`proceedings, a joint motion to terminate the proceeding on the basis of a
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`settlement reached by the parties. See 35 U.S.C. § 317(a); 37 C.F.R.
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`§ 42.72. The parties also filed a copy of their written settlement agreement
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`and a request that the settlement agreement be treated as business
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`confidential information under 35 U.S.C. § 317(b) and 37 C.F.R.
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`§ 42.74(c).1
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`The parties’ joint motion to terminate was filed prior to the oral
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`hearings in Cases IPR2014-00103, IPR2014-00104, IPR2014-00105,
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`IPR2014-00108, and IPR2014-00898, and the Board has not made a final
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`decision on the merits in any of the proceedings. See 35 U.S.C. § 317(a).
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`Regarding Case IPR2014-01250, the Board has not yet determined whether
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`to institute an inter partes review. The parties represent that their
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`“settlement agreement has resolved all disputes involving the [four
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`challenged patents] between all the parties” in the related district court case
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`and International Trade Commission investigation, and that the parties will
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`be filing a motion to dismiss and a motion to terminate, respectively, in
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`those proceedings. Paper 35, 7–9. The parties further represent that there
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`are “no other petitions for inter partes review” and “no other litigations”
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`involving the challenged patents. Id. at 7. Given these facts, we determine
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`that it is appropriate to terminate the proceedings without rendering a final
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`
`1 See IPR2014-00103, Papers 33–35; IPR2014-00104, Papers 31–33;
`IPR2014-00105, Papers 39–41; IPR2014-01250, Papers 8–10;
`IPR2014-00108, Papers 42–44; IPR2014-00898, Papers 34–36. As the
`papers are the same in each proceeding, we will refer to those filed in Case
`IPR2014-00103 for convenience. We authorized the joint motion to
`terminate in a conference call on January 26, 2015.
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`
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`2
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`
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`IPR2014-00103, IPR2014-00104, IPR2014-00105, IPR2014-01250,
`IPR2014-00108, IPR2014-00898
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`written decision under 37 C.F.R. § 42.72. The oral hearings in all of the
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`instant proceedings are cancelled.
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`Regarding Case IPR2014-00105, we previously granted Patent
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`Owner’s motion to seal and ordered that Paper 24, Exhibits 2010–2021, and
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`the unredacted version of Exhibit 2005 be maintained under seal. See
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`IPR2014-00105, Paper 29, 6–7. The sealed materials were filed after
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`institution of trial and were not considered by the Board in instituting trial.
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`Given that we are not rendering a final written decision in the proceeding,
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`the sealed materials will be expunged from the record unless either party
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`objects within five business days by emailing the Board at
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`Trials@uspto.gov.
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`In consideration of the foregoing, it is hereby:
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`ORDERED that the parties’ joint request that the settlement
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`agreement be treated as business confidential information, kept separate
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`from the files of U.S. Patent No. 6,369,416 B1, U.S. Patent No. 6,459,625
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`B1, U.S. Patent No. 6,731,536 B1, and U.S. Patent No. 7,151,027 B1, and
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`made available only to Federal Government agencies on written request, or
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`to any person on a showing of good cause, under 35 U.S.C. § 317(b) and
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`37 C.F.R. § 42.74(c), is granted;
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`FURTHER ORDERED that the joint motion to terminate the instant
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`proceedings is granted and the proceedings are hereby terminated; and
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`FURTHER ORDERED that, unless either party objects within five
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`business days of this Judgment, Paper 24, Exhibits 2010–2021, and the
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`unredacted version of Exhibit 2005 in Case IPR2014-00105 will be
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`expunged from the record of the proceeding.
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`
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`3
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`
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`IPR2014-00103, IPR2014-00104, IPR2014-00105, IPR2014-01250,
`IPR2014-00108, IPR2014-00898
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`PETITIONER:
`
`Michael M. Murray
`Michael J. Scheer
`Andrew R. Sommer
`Steven M. Anzalone
`WINSTON & STRAWN
`mmurray@winston.com
`mscheer@winston.com
`asommer@winston.com
`sanzalone@winston.com
`
`
`PATENT OWNER:
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`J. Steven Baughman
`Gabrielle E. Higgins
`ROPES & GRAY LLP
`steven.baughman@ropesgray.com
`gabrielle.higgins@ropesgray.com
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`
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`4
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