Trials@uspto.gov
`571-272-7822
`
`Paper 20
`Entered: September 17, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MEDIATEK INC. and MEDIATEK USA, INC.,
`Petitioner,
`
`v.
`
`BANDSPEED, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00314 (Patent 7,477,624 B2)
`Case IPR2015-00315 (Patent 7,477,624 B2)
`Case IPR2015-00316 (Patent 7,477,624 B2)
`Case IPR2015-00531 (Patent 8,542,643 B2)1
`____________
`
`
`
`Before BART A. GERSTENBLITH, DAVID C. McKONE, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Joint Motions to Terminate
`37 C.F.R. § 42.74
`
`
`
`
`
`1 This Order addresses the same issue in four captioned inter partes reviews.
`The parties are not authorized to use this style of filing in subsequent papers
`without prior authorization.
`
`
`571-272-7822
`
`Paper 20
`Entered: September 17, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MEDIATEK INC. and MEDIATEK USA, INC.,
`Petitioner,
`
`v.
`
`BANDSPEED, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00314 (Patent 7,477,624 B2)
`Case IPR2015-00315 (Patent 7,477,624 B2)
`Case IPR2015-00316 (Patent 7,477,624 B2)
`Case IPR2015-00531 (Patent 8,542,643 B2)1
`____________
`
`
`
`Before BART A. GERSTENBLITH, DAVID C. McKONE, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Joint Motions to Terminate
`37 C.F.R. § 42.74
`
`
`
`
`
`1 This Order addresses the same issue in four captioned inter partes reviews.
`The parties are not authorized to use this style of filing in subsequent papers
`without prior authorization.
`
`
`
`IPR2015-00314 (Patent 7,477,624 B2)
`IPR2015-00315 (Patent 7,477,624 B2)
`IPR2015-00316 (Patent 7,477,624 B2)
`IPR2015-00531 (Patent 8,542,643 B2)
`
`
`On August 5, 2015, the parties filed Joint Motions to Terminate each
`
`of the captioned proceedings. Paper 17.2 For each proceeding, the parties
`
`represent that “the dispute between the parties has been resolved, and
`
`further, the parties have agreed to terminate this inter partes review.” Id.
`
`at 2. With each of their Motions to Terminate, the parties filed what they
`
`represent is “a true copy of their written agreement as Exhibit 1018.” Id. In
`
`concurrently filed Joint Motions to Seal, the parties request that the
`
`agreement be treated as business confidential information and be kept
`
`separate from the file of the involved patent. Paper 18.
`
`These proceedings are related to IPR2015-1577, IPR2015-01580,
`
`IPR2015-01581, and IPR2015-01582 (“the related proceedings”). In each of
`
`the related proceedings, a petition was filed by Qualcomm Incorporated on
`
`July 12, 2015, with a motion to join a respective one of these proceedings.
`
`Papers 1, 2 in each of the related proceedings. We note that the joinder
`
`motions in the related proceedings were filed before the instant motions to
`
`terminate were filed in these proceedings. Patent Owner opposes the joinder
`
`motions in the related proceedings. Paper 8 in each of the related
`
`proceedings. If the joinder motions are not granted, the related proceedings
`
`are barred under 35 U.S.C. § 315(b). See 35 U.S.C. § 315(c). Patent Owner
`
`has not yet filed a preliminary response in any of the related proceedings, the
`
`deadline for which is October 28, 2015, nor sought to expedite the related
`
`proceedings by filing a waiver under 37 C.F.R. § 42.107(b). It is thus
`
`
`2 Citations are to IPR2015-00314.
`
`
`
`IPR2015-00314 (Patent 7,477,624 B2)
`IPR2015-00315 (Patent 7,477,624 B2)
`IPR2015-00316 (Patent 7,477,624 B2)
`IPR2015-00531 (Patent 8,542,643 B2)
`
`premature to decide the joinder motions in the related proceedings. See
`
`35 U.S.C. § 315(c).
`
`Nevertheless, we discern no compelling interest to be served by
`
`delaying termination of these proceedings with respect to MediaTek Inc. and
`
`MediaTek USA, Inc., both of which have settled with Patent Owner. See
`
`35 U.S.C. § 317 (“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” (emphasis
`
`added)). These proceedings are at an early stage, and no motions are
`
`pending in any of these proceedings. Under these circumstances, we
`
`determine that it is appropriate to terminate these proceedings with respect to
`
`MediaTek Inc. and MediaTek USA, Inc. We exercise the discretion
`
`afforded under 35 U.S.C. § 317(a) to decline, at this time, to terminate these
`
`proceedings with respect to Patent Owner. Because no petitioner remains in
`
`these proceedings, we vacate the Scheduling Order in each proceeding
`
`(Paper 13 in IPR2015-00314, IPR2015-00316, and IPR2015-00531; and
`
`Paper 15 in IPR2015-00315). If necessary, we will revisit scheduling for
`
`these proceedings after decisions on the joinder motions are made in the
`
`related proceedings. If appropriate, we will also revisit the Motions to
`
`Terminate as to Patent Owner after ruling on the motions for joinder in the
`
`related proceedings.
`
`The Joint Motions to Seal are granted to the extent that they request
`
`that the agreement be treated as business confidential information and be
`
`kept separate from the patent files under 37 C.F.R. § 42.74(c) but otherwise
`
`
`
`IPR2015-00314 (Patent 7,477,624 B2)
`IPR2015-00315 (Patent 7,477,624 B2)
`IPR2015-00316 (Patent 7,477,624 B2)
`IPR2015-00531 (Patent 8,542,643 B2)
`
`denied. The requests should not have been filed as “Motions to Seal,” which
`
`has other meaning, under 37 C.F.R. § 42.14, with respect to the underlying
`
`document in the context of the proceeding, e.g., expungement or made
`
`public under certain circumstances.
`
`
`
`Accordingly, it is
`
`ORDERED that the Joint Motions to Terminate the captioned
`
`proceedings are granted with respect to MediaTek Inc. and MediaTek USA,
`
`Inc.;
`
`FURTHER ORDERED that the agreement (Ex. 1018) be treated as
`
`business confidential information and be kept separate from the file of the
`
`involved patent, under 37 C.F.R. § 42.74(c);
`
`FURTHER ORDERED that the Scheduling Order in each proceeding
`
`(Paper 13 in IPR2015-00314, IPR2015-00316, and IPR2015-00531; and
`
`Paper 15 in IPR2015-00315) is vacated; and
`
`FURTHER ORDERED that each of the captioned proceedings will
`
`continue with respect to Bandspeed, Inc.
`
`
`
`
`
`
`
`IPR2015-00314 (Patent 7,477,624 B2)
`IPR2015-00315 (Patent 7,477,624 B2)
`IPR2015-00316 (Patent 7,477,624 B2)
`IPR2015-00531 (Patent 8,542,643 B2)
`
`FOR PETITIONER:
`
`Lori Gordon
`Lgordon-PTAB@skgf.com
`
`Robert Sokohl
`Rsokohl-PTAB@skgf.com
`
`Jeffrey Helvey
`Jhelvey-PTAB@skgf.com
`
`
`
`FOR PATENT OWNER:
`
`Gregory Donahue
`gdonahue@dpelaw.com
`
`David Simmons
`Davidsimmons1@sbcglobal.net
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