`571-272-7822
`
`
`
`
`Paper 10
`Entered: January 4, 2022
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CYPRESS SEMICONDUCTOR CORP. and STMICROELECTRONICS,
`INC.,
`Petitioner,
`
`v.
`
`NEODRON LTD.,
`Patent Owner.
`____________
`
`IPR2021-01128
`Patent 8,432,173 B2
`
`
`Before MIRIAM L. QUINN, PATRICK M. BOUCHER,
`And CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`TERMINATION
`Due to Settlement After Institution of Trial and
`Granting Joint Request to Treat Settlement Agreement as
`Business Confidential Information
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`
`
`
`
`
`
`
`IPR2021-01128
`Patent 8,432,173 B2
`
`I.
`
`INTRODUCTION
`Petitioner and Patent Owner (collectively “the Parties”) have
`requested that the above-identified inter partes review proceeding be
`terminated pursuant to a settlement. Upon authorization by the Board on
`December 23, 2021, the Parties filed a Joint Motion to Terminate the above-
`captioned proceedings. IPR2021-01128, Paper 8 (“Joint Motion”). The
`Parties also filed copies of Settlement Agreements (IPR2021-01128,
`Exs. 2002−2003, “Settlement Agreements”) and filed a Joint Request to
`Keep Separate (IPR2021-01128, Paper 9, “Joint Request”).
`II. DISCUSSION
`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 the patent owner, unless the Office has decided
`the merits of the proceeding before the request for termination is filed.” It is
`also provided in 35 U.S.C. § 317(a) that if no petitioner remains in the inter
`partes review, the Office may terminate the review.
`In the Joint Motion, the Parties represent that they have reached a
`settlement, jointly seek termination of the joined inter partes review
`proceeding, a true copy of the settlement agreement was filed as an exhibit,
`and there are no other collateral agreements between the parties made in
`connection with, or in contemplation of, the termination. Joint Motion 1–2.
`The Parties also represent that “the lawsuits between Patent Owner and
`Petitioners, involving the Patent-in-Suit have been dismissed,” and that the
`“parties do not contemplate any litigation or proceeding involving the
`Patent-in-Suit in the foreseeable future.” Joint Motion 3.
`We instituted a trial on December 13, 2021. Paper 6. We have not
`
`
`
`2
`
`
`
`IPR2021-01128
`Patent 8,432,173 B2
`
`yet decided the merits of the proceeding, and a final written decision has not
`been entered. Notwithstanding that the proceeding has moved beyond the
`preliminary stage, the Parties have shown adequately that the termination of
`the joined proceeding is appropriate. Under these circumstances, we
`determine that good cause exists to terminate the joined proceeding with
`respect to the Parties.
`The Parties also requested that the Settlement Agreements be treated
`as business confidential information and be kept separate from the file of
`Patent 8,432,173. Joint Request 1–2. After reviewing the Settlement
`Agreements between the Parties, we find that the Settlement Agreements
`contain confidential business information regarding the terms of settlement.
`We determine that good cause exists to treat the Settlement Agreements as
`business confidential information pursuant to 35 U.S.C. § 317(b) and 37
`C.F.R. § 42.74(c).
`This Order does not constitute a final written decision pursuant to 35
`U.S.C. § 318(a).
`
`III. ORDER
`Accordingly, for the reasons discussed above, it is:
`ORDERED that the Joint Motion is granted, and that IPR2021-01128
`is hereby terminated; and
`
`FURTHER ORDERED that the Joint Request is granted, and the
`Settlement Agreements shall be kept separate from the file of Patent
`8,432,173, and made available only to Federal Government agencies on
`written request, or to any person on a showing of good cause, pursuant to
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`
`
`
`
`3
`
`
`
`IPR2021-01128
`Patent 8,432,173 B2
`
`For PETITIONER:
`
`David M. Hoffman (Lead Counsel)
`Tyler R. Bowen
`IPR13276-0075IP1@fr.com
`tbowen@perkinscoie.com
`
`
`
`For PATENT OWNER:
`
`Reza Mirzaeie (Lead Counsel)
`Kristopher Davis
`C. Jay Chung
`rmirzaie@raklaw.com
`rak_neodron@raklaw.com
`kdavis@raklaw.com
`
`
`
`
`
`4
`
`
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