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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`TEXAS INSTRUMENTS INCORPORATED,
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`Petitioner,
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`V.
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`ADVANCED SILICON TECHNOLOGIES, LLC
`Patent Owner
`
`Case No. IPR2016—O1108
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`Patent No. 8,933,945
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`JOINT REQUEST TO FILE SETTLEMENT AGREEMENT
`AS BUSINESS CONFIDENTIAL INFORMATION AND TO MAINTAIN
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`SAID AGREEMENT SEPARATE FROM THE PUBLIC FILE PURSUANT
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`TO 35 U.S.C. § 317(b) AND 37 C.F.R. § 42.74(c)
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`
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`IPRZO16-01108
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`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) and the Board’s
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`authorization of July 28, 2016, Petitioner Texas Instruments Incorporated and
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`Patent Owner Advanced Silicon Technologies, LLC jointly request to treat as
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`business confidential information the true and complete copy of the Settlement and
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`License Agreement (Confidential Exhibit 1013) between the parties, as referenced
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`in the parties’ Joint Motion to Terminate Pursuant to 35 U.S.C. § 317 and 37
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`C.F.R. § 42.74, filed concurrently herewith.
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`35 U.S.C. § 317(b) provides that:
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`At
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`the request of a party to the proceeding,
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`the agreement or
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`understanding shall be treated as business confidential information,
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`shall be kept separate from the file of the involved patents, and shall
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`be made available only to Federal Government agencies on written
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`request, or to any person on a showing of good cause.
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`Likewise, 37 C.F.R. § 42.74(c) provides that:
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`A party to a settlement may request that the settlement be treated as
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`business confidential information and be kept separate from the files
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`of an involved patent or application. The request must be filed with
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`the settlement. If a timely request is filed, the settlement shall only be
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`available:
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`(1) To a Government agency on written request to the Board; or
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`
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`IPRZO16-01108
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`(2) To any other person upon written request to the Board to make the
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`settlement agreement available, along with the fee specified in
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`§ 42.15(d) and on a showing of good cause.
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`The present request, which is being filed Contemparaneously with the
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`Settlement and License Agreement, is timely and in accordance with the foregoing
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`authority. Therefore, parties request that the Settlement and License Agreement
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`(Confidential Exhibit 1013) (i) be treated as business confidential information, (ii)
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`be maintained separate from the publicly available file of the involved patent, and
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`(iii) shall be made available only to Federal Government agencies on written
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`request, or to persons showing good cause on written request, pursuant to 35
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`U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
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`
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`Date: July 28, 2016
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`Respectfully submitted,
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`IPR2016—01108
`
`if
`
`Grego
`S. Discher
`Registration No.: 42,488
`David A. Garr
`
`Registration No. 74,932
`COVINGTON & BURLING LLP
`
`One CityCenter, 850 Tenth Street, NW
`Washington, DC 20001
`(202) 662-6000
`Attorneys for Petitioner
`
`By [_Wi1liam A. Meunierz
`William A. Meunier
`
`Registration No.: 41,193
`MINTZ, LEVIN, COHN, FERRIS,
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`GLOVSKY AND POPEO, P.C.
`One Financial Center
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`Boston, MA 02111
`Telephone: (617) 348-1615
`Attorneys for Patent Owner
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`
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`CERTIFICATE OF SERVICE
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`IPR2016—01108
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`Pursuant to 37 C.F.R. § 42.6, I hereby certify that on this 28th day of July
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`2016, the foregoing Joint Request to File Settlement Agreement as Business
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`Confidential Information and to Maintain Said Agreement Separate from the
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`Public File Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), together with
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`Confidential Exhibit 1013, was served via email by agreement of the parties on the
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`following counsel of record for Patent Owner:
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`William A. Meunier
`
`Michael T. Renaud
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`Adam S. Rizk
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`MINTZ, LEVIN, COHN, FERRIS,
`GLOVSKY & POPEO P.C.
`
`One Financial Center
`
`Boston, MA 02111
`
`AdSilTechIPRs@mintz.com
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`Date: July 28,2016
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`/
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` /
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`#04
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`/
`
`Garr, Esq.
`I7)/avid
`Registration No.2 74,932