`571-272-7822
`
`
`
`Paper 8
`Entered: May 22, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MARVELL SEMICONDUCTOR, INC.,
`MEDIATEK INC., and MEDIATEK USA, INC.,
`Petitioner,
`
`v.
`
`BANDSPEED, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00314
`Patent 7,477,624 B2
`____________
`
`
`
`Before MICHELLE N. WORMMEESTER,
`Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`On May 20, 2015, a telephone conference call was held between
`respective counsel for the parties and Judge Wormmeester. One of the three
`constituents of Petitioner, i.e., Marvell Semiconductor, Inc. (“Marvell”), and
`Patent Owner sought authorization to file a joint motion to terminate this
`proceeding, under 35 U.S.C. § 317(a), with respect to Marvell, on the basis
`
`
`
`
`
`IPR2015-00314
`Patent 7,477,624 B2
`
`
`that Marvell and Patent Owner have settled. We recognize that a trial has
`not yet been instituted, but the same considerations apply.
`Generally, the Board expects that a proceeding will terminate after the
`filing of a settlement agreement, if the settlement agreement includes all
`constituent entities of Petitioner. See, e.g., Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Here, we would
`expect the proceeding to terminate with respect to Marvell, but not the other
`constituent entities of Petitioner and the Patent Owner. Any agreement or
`understanding between Marvell and Patent Owner made in connection with,
`or in contemplation of, the termination of a proceeding shall be in writing
`and a true copy of the agreement shall be filed with the Board prior to
`termination. See 37 C.F.R. § 42.74(b).
`The joint motion must include a brief explanation as to why
`termination as to Marvell is appropriate. Information should be provided on
`the status of related district court actions in which U.S. Patent
`No. 7,477,624 B2 has been asserted, particularly regarding the status of all
`defendants.
`The joint motion to terminate must be accompanied by a true copy of
`the settlement agreement, as well as any collateral agreements referred to in
`the settlement agreement, as required by 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(b). A redacted version of the settlement agreement will not be
`accepted as a true copy of the settlement agreement.
`With regard to having the settlement agreement treated as business
`confidential information and kept separate from the patent file(s) under
`37 C.F.R. § 42.74(c), Marvell and Patent Owner must file the confidential
`settlement agreement electronically via the Patent Review Processing
`
`2
`
`
`
`
`
`
`IPR2015-00314
`Patent 7,477,624 B2
`
`
`System (PRPS) in accordance with the instructions provided on the Board’s
`website (uploading as “Board Only”). Marvell and Patent Owner also are
`directed to FAQ G2 on the Board’s website page at
`http://www.uspto.gov/ip/boards/bpai/prps.jsp for instructions on how to file
`a settlement agreement as confidential.
`During the conference call, counsel for the two other constituents of
`Petitioner, i.e., MediaTek Inc. and MediaTek USA, Inc. (collectively,
`“MediaTek entities”), indicated that those two constituent entities will not
`oppose the joint motion to terminate the proceeding as to Marvell. Counsel
`for the MediaTek entities also indicated that the same counsel for Petitioner
`will continue to represent the MediaTek entities after termination of this
`proceeding as to Marvell.
`Accordingly, it is
`ORDERED that Marvell Semiconductor, Inc. and Patent Owner are
`authorized to file a joint motion to terminate this inter partes review
`proceeding with respect to Marvell Semiconductor, Inc.;
`FURTHER ORDERED that the joint motion must be accompanied by
`a true copy of the settlement agreement, labeled as an exhibit, as required by
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b);
`FURTHER ORDERED that in a separate motion Marvell
`Semiconductor, Inc., and Patent Owner may request that the settlement
`agreement be treated as business confidential information and kept separate
`from the underlying patent file, as provided in 37 C.F.R. § 42.74(c);
`FURTHER ORDERED that any confidential settlement agreement
`must be filed electronically via PRPS in accordance with the instructions
`provided on the Board’s website (uploading as “Board Only”); and
`
`3
`
`
`
`
`
`
`IPR2015-00314
`Patent 7,477,624 B2
`
`
`
`FURTHER ORDERED that the motions shall be filed on or before
`June 5, 2015.
`
`Petitioner:
`
`Lori A. Gordon
`Robert E. Sokohl
`Jeffrey T. Helvey
`Sterne Kessler, Goldstein & Fox P.L.L.C.
`lgordon-PTAB@skgf.com
`rsokohl-PTAB@skgf.com
`jhelvey-PTAB@skgf.com
`
`
`
`
`
`Patent Owner:
`
`Gregory S. Donahue
`DiNovo Price Ellwanger & Hardy LLP
`gdonahue@dpelaw.com
`
`David O. Simmons
`IVC Patent Agency
`davidsimmons1@sbcglobal.net
`
`
`4
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