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Trials@uspto.gov Paper No. 11, IPR2016-01026
`571.272.7822 Paper No. 11, IPR2016-01060
` Paper No. 11, IPR2016-01374
` Entered: October 11, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`ADVANCED SILICON TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01026 (Patent 6,546,439 B1);
`Case IPR2016-01060 (Patent 8,933,945 B2);
`Case IPR2016-01374 (Patent 6,339,428 B1)1
`____________
`
`
`
`
`
`
`
`Before KRISTEN L. DROESCH, PATRICK R. SCANLON, and
`BART A. GERSTENBLITH, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`DECISION
`Termination and Settlement
`35 U.S.C. § 317; 37 C.F.R. §§ 42.72, 42.74
`
`
`
`
`1 This Decision addresses issues that apply to the three cases. We, therefore,
`exercise our discretion to issue one Decision to be filed in each of the cases.
`The parties are not authorized to use this heading style in their papers.
`
`

`
`Case IPR2016-01026 (Patent 6,546,439 B1)
`Case IPR2016-01060 (Patent 8,933,945 B2)
`Case IPR2016-01374 (Patent 6,339,428 B1)
`
`
`I.
`
`DISCUSSION
`
`In an e-mail dated October 5, 2016, we authorized the parties to file
`
`joint motions to terminate the instant proceedings with true copies of their
`
`agreement(s) in contemplation of termination and joint motions to treat the
`
`filed copies of their agreement(s) as business confidential information under
`
`37 C.F.R. § 42.74(c). On October 6, 2016, the parties filed a Joint Motion to
`
`Terminate Under 35 U.S.C. § 317(a) (Paper 92), a copy of a written
`
`Settlement Agreement (Ex. 1014), and a Joint Motion to Keep Confidential
`
`Under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (Paper 10) in each of the
`
`proceedings.3
`
`The parties indicate that they have settled their underlying dispute and
`
`have agreed to terminate these proceedings. Paper 9, 2. The parties filed
`
`what they represent is a true and accurate copy of their written confidential
`
`settlement agreement (“Settlement Agreement”), and indicate that there are
`
`no other agreements or understandings, oral or written, between the parties,
`
`including any collateral agreements, made in connection with, or in
`
`contemplation of, the termination of these proceedings. Id. The parties
`
`further indicate that the Settlement Agreement resolves all underlying
`
`disputes between the parties with respect to other cases before the
`
`
`2 Citations are to IPR2016-01026, unless otherwise indicated.
`
`3 The parties filed these documents, respectively, in each of the instant
`proceedings as follows:
`
` IPR2016-01060: Paper 9, Exhibit 1017, and Paper 10; and
` IPR2016-01374: Paper 9, Exhibit 1009, and Paper 10.
`
`
`
`2
`
`

`
`Case IPR2016-01026 (Patent 6,546,439 B1)
`Case IPR2016-01060 (Patent 8,933,945 B2)
`Case IPR2016-01374 (Patent 6,339,428 B1)
`
`U.S. International Trade Commission Investigation, and the U.S. District
`
`Court for the District of Delaware. Id. at 2, 5–7.
`
`Generally, the Board expects that a proceeding will terminate after the
`
`filing of a settlement agreement. See, e.g., Office Patent Trial Practice
`
`Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). For the petitions for
`
`inter partes review before us, trial has not yet been instituted, and the merits
`
`of the proceedings have not been decided. See 35 U.S.C. § 317(a) (“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.”); 37 C.F.R. § 42.72 (“The Board may terminate a
`
`trial without rendering a final written decision, where appropriate . . . .”).
`
`We are persuaded that, under these circumstances, termination of these
`
`proceedings is appropriate.
`
`This Decision does not constitute a final written decision pursuant to
`
`35 U.S.C. § 318(a).
`
`II. ORDER
`
`Accordingly, it is
`
`ORDERED the parties’ Joint Motion to Terminate Under 35 U.S.C.
`
`§ 317(a) (IPR2016-01026, Paper 9; IPR2016-01060, Paper 9; and
`
`IPR2016-01374, Paper 9) in each of the instant proceedings is granted;
`
`FURTHER ORDERED that the parties’ Joint Motion to Keep
`
`Confidential Under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c)
`
`(IPR2016-01026, Paper 10; IPR2016-01060, Paper 10; and IPR2016-01374,
`
`Paper 10) in each of the instant proceedings is granted;
`
`
`
`3
`
`

`
`Case IPR2016-01026 (Patent 6,546,439 B1)
`Case IPR2016-01060 (Patent 8,933,945 B2)
`Case IPR2016-01374 (Patent 6,339,428 B1)
`
`
`FURTHER ORDERED that the Settlement Agreement
`
`(IPR2016-01026, Exhibit 1014; IPR2016-01060, Exhibit 1017; and
`
`IPR2016-01374, Exhibit 1009) in each of the instant proceedings shall be
`
`kept separate from the file of the above-referenced patents, pursuant to
`
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c); and
`
`FURTHER ORDERED that each of these proceedings is terminated.
`
`
`
`4
`
`

`
`Case IPR2016-01026 (Patent 6,546,439 B1)
`Case IPR2016-01060 (Patent 8,933,945 B2)
`Case IPR2016-01374 (Patent 6,339,428 B1)
`
`For PETITIONER:
`
`David Cavanaugh
`Daniel Williams
`WILMER, CUTLER, PICKERING, HALE AND DORR LLP
`david.cavanaugh@wilmerhale.com
`daniel.williams@wilmerhale.com
`
`Jonathan Stroud
`Unified Patents Inc.
`jonathan@unifiedpatents.com
`
`
`
`For PATENT OWNER:
`
`William A. Meunier
`Michael T. Renaud
`Adam S. Rizk
`MINTZ, LEVIN, COHEN, FERRIS, GLOVSKY AND POPEO, P.C.
`wameunier@mintz.com
`mtrenaud@mintz.com
`arizk@mintz.com
`
`5

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