`Trials@uspto.gov
`571-272-7822 Entered: October 5, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SMART MODULAR TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`JAMES B. GOODMAN,
`Patent Owner.
`____________
`
`Case IPR2015-01675
`Patent 6,243,315 B1
`____________
`
`
`Before BRIAN J. MCNAMARA, PATRICK M. BOUCHER, and
`GARTH D. BAER, Administrative Patent Judges.
`
`BAER, Administrative Patent Judge.
`
`
`DECISION
`Termination of the Proceeding
`37 C.F.R. §§ 42.72, 42.73, 42.74
`
`
`
`I. DISCUSSION
`On October 3, 2016, the parties filed a Joint Motion to terminate this
`proceeding under 35 U.S.C. § 317. Paper 19. The parties also filed a true
`copy of their settlement agreement. Ex. 1021. The parties indicate in their
`
`
`
`IPR2015-01675
`Patent 6,243,315 B1
`
`Joint Motion that termination of this proceeding is appropriate because they
`have settled their disputes involving U.S. Patent No. 6,243,315 B1 (“the
`’315 patent”). See Paper 19, 2. The parties further certify that there are no
`collateral agreements or understandings made in connection with the
`termination of this proceeding. Id. The Joint Motion also indicates that
`“Patent Owner plans to license and if necessary, enforce his rights under the
`’315 Patent, but not against [Petitioner].” Id. at 3.
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
`this chapter shall be terminated with respect to any petitioner upon the joint
`request of the petitioner and patent owner, unless the Office has decided the
`merits of the proceeding before the request for termination is filed.” The
`parties are requesting termination before the oral hearing and before the
`Board’s final written decision. We also note that briefing has not been
`completed, as Petitioner has not filed a Reply to Patent Owner’s Response.
`Further, under 37 C.F.R. § 42.74(b), “[a]ny agreement or
`understanding between the parties made in connection with, or in
`contemplation of, the termination of a proceeding shall be in writing and a
`true copy shall be filed with the Board before termination of the trial.” As
`the parties have filed their written settlement agreement, we determine it is
`appropriate to terminate this proceeding without rendering a Final Written
`Decision as to the patentability of claims 1, 5, 10, and 16 of the ’315 patent.
`See 37 C.F.R. §§ 42.72, 42.73, 42.74.
`
`II. ORDER
`
`
`
`Accordingly, it is:
`ORDERED that the parties’ Joint Motion to terminate this proceeding
`is granted and this case is hereby terminated.
`
`2
`
`
`
`3
`
`IPR2015-01675
`Patent 6,243,315 B1
`
`
`
`FOR PETITIONER:
`Michael F. Heafey
`mheafey@kslaw.com
`Sanjiva K. Reddy
`sreddy@kslaw.com
`
`FOR PATENT OWNER:
`David Fink
`texascowboy6@gmail.com
`Kenneth A. Roddy
`federallitigataionlaw@gmail.com