`571.272.7822 Paper No. 9, IPR2016-01178
` Paper No. 9, IPR2016-01266
` Entered: August 17, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TEXAS INSTRUMENTS INCORPORATED,
`Petitioner,
`
`v.
`
`ADVANCED SILICON TECHNOLOGIES LLC,
`Patent Owner.
`_______________
`
`Case IPR2016-01108 (Patent 8,933,945 B2)
`Case IPR2016-01178 (Patent 6,339,428 B1)
` Case IPR2016-01266 (Patent 6,546,439 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 Order to be filed in each of the cases.
`The parties are not authorized to use this heading style in their papers.
`
`
`
`Case IPR2016-01108 (Patent 8,933,945 B2)
`Case IPR2016-01178 (Patent 6,339,428 B1)
`Case IPR2016-01266 (Patent 6,546,439 B1)
`
`
`
`I.
`
`DISCUSSION
`
`In an e-mail dated July 28, 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 the same day, the parties filed a Joint Motion to
`Terminate Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74 (Paper 72), a
`copy of a written Settlement Agreement (Ex. 1013), and a Joint Request to
`File Settlement Agreement as Business Confidential Information and to
`Maintain Said Agreement Separate from the Public File Pursuant to
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (Paper 8) in each of the
`proceedings.3
`The parties indicate that they have settled their underlying dispute and
`have agreed to terminate these proceedings. Paper 7 at 1–2. The parties
`filed what they represent is a true and correct copy of their written
`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. at 2. The parties further indicate that
`they filed a joint motion to terminate a related U.S. International Trade
`
`
`2 Citations are to IPR2016-01108, unless otherwise indicated.
`3 The parties filed these documents in IPR2016-01178 as Paper 6,
`Exhibit 1013, and Paper 7, respectively, and in IPR2016-01266 as Paper 6,
`Exhibit 1011, and Paper 7, respectively.
`
`
`
`2
`
`
`
`Case IPR2016-01108 (Patent 8,933,945 B2)
`Case IPR2016-01178 (Patent 6,339,428 B1)
`Case IPR2016-01266 (Patent 6,546,439 B1)
`
`
`
`Commission Investigation, and will file a stipulation or notice to dismiss
`their related district court litigation. Id. at 1–2.
`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 that the parties’ Joint Motion to Terminate Pursuant to
`35 U.S.C. § 317 and 37 C.F.R. § 42.74 (IPR2016-01108, Paper 7;
`IPR2016-01178, Paper 6; IPR2016-01266, Paper 6) is granted;
`FURTHER ORDERED that the parties’ Joint Request to File
`Settlement Agreement as Business Confidential Information and to Maintain
`Said Agreement Separate from the Public File Pursuant to 35 U.S.C.
`
`
`
`3
`
`
`
`Case IPR2016-01108 (Patent 8,933,945 B2)
`Case IPR2016-01178 (Patent 6,339,428 B1)
`Case IPR2016-01266 (Patent 6,546,439 B1)
`
`
`
`§ 317(b) and 37 C.F.R. § 42.74(c) (IPR2016-01108, Paper 8;
`IPR2016-01178, Paper 7; IPR2016-01266, Paper 7) is granted;
`FURTHER ORDERED that the Settlement Agreement
`(IPR2016-01108, Exhibit 1013; IPR2016-01178, Exhibit 1013;
`IPR2016-01266, Exhibit 1011) 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 IPR2016-01108 (Patent 8,933,945 B2)
`Case IPR2016-01178 (Patent 6,339,428 B1)
`Case IPR2016-01266 (Patent 6,546,439 B1)
`
`
`
`For PETITIONER:
`
`Gregory S. Discher
`David A. Garr
`Andrea G. Reister
`COVINGTON & BURLING LLP
`gdischer@cov.com
`dgarr@cov.com
`areister@cov.com
`
`
`
`
`
`For PATENT OWNER:
`
`William 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