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`Trials@uspto.gov
`571-272-7822
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`
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`Paper No. 15
`Date Entered: August 23, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZTE USA, Inc.,
`Petitioner,
`
`v.
`
`PARTHENON UNIFIED MEMORY ARCHITECTURE LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00664
`Patent 5,812,789
`____________
`
`
`
`
`
`Before MICHAEL R. ZECHER, JAMES B. ARPIN, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`DECISION
`Termination of the Proceeding and
`Dismissal of Petitioner’s Renewed Motion for Joinder
`37 C.F.R. §§ 42.72, 42.74, and 42.122(b)
`
`
`
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`
`
`
`
`IPR2016-00664
`Patent 5,812,789
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`I. DISCUSSION
`On August 19, 2016, the parties filed a Joint Motion to Terminate this
`proceeding (Paper 12), a true copy of the parties’ settlement agreement (Ex. 2001),
`and a request to treat the settlement agreement as business confidential information
`under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (Paper 14).
`This proceeding is still in its preliminary stages. On February, 26, 2016,
`Petitioner, ZTE USA, Incorporated (“ZTE”), filed a Petition requesting an inter
`partes review of claims 1, 3–6, 11, and 13 of U.S. Patent No. 5,812,789 (Ex. 1001,
`“the ’789 patent”). Paper 2. ZTE filed its Petition along with an initial Motion for
`Joinder requesting that we join ZTE as a party with Samsung Elecs. Co. v.
`Parthenon Unified Memory Architecture LLC, Case IPR2015-01944 (“Samsung
`IPR”). Paper 3. As we explained in an Order dated June 8, 2016, we instituted an
`inter partes review in the Samsung IPR on March 30, 2016, and we granted a Joint
`Motion to Terminate the Samsung IPR on May 25, 2016. Paper 10, 3. As a
`consequence, we dismissed without prejudice ZTE’s initial Motion for Joinder and
`authorized ZTE to file a renewed Motion for Joinder that seeks joinder with a
`Petition filed by Apple Incorporated (“Apple”) requesting an inter partes review of
`claims 1, 3–6, 11, and 13 of the ’789 patent (Case IPR2016-00923, “Apple IPR”).
`On June 15, 2016, ZTE filed a Renewed Motion for Joinder requesting that we join
`ZTE as a party with the Apple IPR. Paper 11. Patent Owner, Parthenon Unified
`Memory Architecture, Limited Liability Company, waived its right to file a
`Preliminary Response in this proceeding. Paper 9. We have not entered a decision
`whether or not to institute an inter partes review.
`In the Joint Motion to Terminate this proceeding, the parties represent that
`they have settled all of their disputes regarding the ’789 patent. Paper 12, 2. The
`parties further represent that the ’789 patent was asserted against multiple
`
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`2
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`IPR2016-00664
`Patent 5,812,789
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`companies in the United States District Court for the Eastern District of Texas. Id.
`In addition to this proceeding, the parties represent that they are involved in the
`following proceedings before the Board: (1) Case IPR2016-00665; (2) Case
`IPR2016-00666; (3) Case IPR2016-0667; and (4) Case IPR2016-00670. Id. at 3.
`According to the parties, they are in the process of filing a Joint Motion to
`Terminate in each of these proceedings. Id. Lastly, the parties represent that the
`’789 patent remains at issue in the following proceedings before the Board:
`(1) Case IPR2016-00847; (2) Case IPR2016-00923; and (3) Case IPR2016-01135.
`Id. Under these particular circumstances, we determine that it is appropriate to
`terminate this proceeding without rendering any further decisions. See 37 C.F.R.
`§ 42.72.
`
`II. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the parties’ request to treat the settlement agreement
`(Ex. 2001) as business confidential information under 35 U.S.C. § 317(b) and 37
`C.F.R. § 42.74(c) is GRANTED;
`FURTHER ORDERED that the Joint Motion to Terminate this proceeding is
`GRANTED, and this proceeding is hereby terminated; and
`FURTHER ORDERED that, because this proceeding has been terminated,
`ZTE’s Renewed Motion for Joinder is dismissed as moot.
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`IPR2016-00664
`Patent 5,812,789
`
`
`For PETITIONER:
`
`Lionel M. Lavenue
`Shaobin Zhu
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`lionel.lavenue@finnegan.com
`shaobin.zhu@finnegan.com
`
`For PATENT OWNER:
`
`Masood Anjom
`Amir Alavi
`Scott Clark
`Ahmad, Zavitsanos, Anaipakos, Alavi & Mensing P.C.
`manjom@azalaw.com
`aalavi@azalaw.com
`sclark@azalaw.com
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