`Tel: 571-272-7822
`
`
`
`
`Paper 13
`Entered: June 10, 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)
`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.
`
`
`
`
`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)
`
`
`
`DECISION
`Joint Motions to Terminate
`37 C.F.R. § 42.74
`
`On June 2, 2015, Marvell Semiconductor, Inc. (“Marvell”) and
`Bandspeed, Inc. (“Bandspeed”) jointly requested that each of the captioned
`proceedings (“these proceedings”) be terminated with respect to Marvell
`pursuant to 35 U.S.C. § 317. Paper 9.2 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. The parties further
`represent that “Petitioner MediaTek [presumably both MediaTek Inc. and
`MediaTek USA, Inc.] does not oppose termination of the instant proceeding
`with respect to Petitioner Marvell.” Id.
`With their Motions to Terminate, Marvell and Bandspeed filed what
`they represent is a “true copy of their written agreement” as Exhibit 1017.
`Id. The motions do not include a representation that all collateral
`agreements between the parties have been filed. The parties clarified in a
`conference call with the Board on June 10, 2015, that no collateral
`agreements between the parties exist, and that Exhibit 1017 provides the full
`agreement between the parties. The parties request that the agreement be
`treated as business confidential information under 35 U.S.C. § 317(b), and
`concurrently filed Motions to Seal in each of the proceedings. Paper 10.
`Each of these proceedings is in an early stage and no decision whether
`
`
`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)
`
`to institute inter partes reviews has been made. Under these circumstances,
`we determine that it is appropriate to terminate these proceedings as to
`Marvell. The proceedings are not terminated with respect to MediaTek Inc.
`or MediaTek USA, Inc. The Motions to Seal are granted.
`
`It is
`ORDERED that the joint Motions to Terminate the captioned
`proceedings with respect to Marvell are granted;
`FURTHER ORDERED that the Motions to Seal are granted, and that
`the joint requests that the settlement agreement be treated as business
`confidential information and be kept separate from the file of the involved
`patents under the provisions of 35 U.S.C. § 317(b), i.e., to be made available
`only to Federal Government agencies on written request, or to any person on
`a showing of good cause, are granted;
`FURTHER ORDERED that each of the captioned proceedings will
`continue with MediaTek Inc. and MediaTek USA, Inc., as named
`petitioners.
`
`
`
`
`
`
`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 A. Gordon
`Robert E. Sokohl
`Jeffrey T. Helvey
`STERNE, KESSLER, GOLDSTEIN & FOX
`lgordon-PTAB@skgf.com
`rsokohl-PTAB@skgf.com
`jhelvey-PTAB@skgf.com
`
`FOR PATENT OWNER:
`Gregory S. Donahue
`DINOVO PRICE ELLWANGER & HARDY LLP
`gdonahue@dpelaw.com
`docketing@dpelaw.com
`
`David O. Simmons
`IVC PATENT AGENCY
`dsimmons1@sbcglobal.net
`
`
`
`
`