`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`CYPRESS SEMICONDUCTOR CORP. and STMICROELECTRONICS, INC.,
`Petitioners,
`
`v.
`
`NEODRON LTD.
`Patent Owner.
`
`
`
`
`
` Case IPR2021-01128
`Patent No. 8,432,173
`
`
`JOINT MOTION TO TERMINATE INTER PARTES REVIEW
`
`Patent Owner Neodron Ltd. and Petitioners Cypress Semiconductor
`
`Corporation and STMicroelectronics, Inc. have reached a settlement. Pursuant to 35
`
`U.S.C. § 317(a) and 37 C.F.R. §§ 42.72 and 42.74, the parties jointly request
`
`termination of the inter partes review of U.S. Patent No. 8,732,173 (“Patent-in-
`
`Suit”), Case IPR2021-01128. The parties were authorized to file this Joint Motion
`
`by the Board (via email) on December 23, 2021.
`
`As required under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), true copies
`
`of the settlement agreements that resolve the disputes in the above-captioned inter
`
`partes review relating to the Patent-in-Suit are filed herewith as exhibits. There are
`
`
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`Case IPR2021-01128
`Patent No. 8,432,173
`no other collateral agreements between the parties made in connection with, or in
`
`contemplation of, the termination sought.
`
`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), Patent Owner and
`
`Petitioners are concurrently filing a Joint Request to Keep Separate, which asks the
`
`Board to treat the settlement agreements as business confidential information, and
`
`to keep them separate from the files of this proceeding and the files of the Patent-in-
`
`Suit.
`
`I.
`
`Statement of Precise Relief Requested
`
`The parties jointly request that the Board terminate this inter partes review of
`
`the Patent-in-Suit, in its entirety.
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`II. Reasons Why Termination Is Appropriate
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`Termination of this proceeding with respect to all parties is proper. This inter
`
`partes review is still in an early stage. This Petition was accorded the filing date of
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`June 16, 2021.
`
`Under 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. Because all parties request
`
`termination and the Board has not yet decided the merits of the proceeding, the Board
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`should terminate the proceeding.
`
`
`
`2
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`
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`Case IPR2021-01128
`Patent No. 8,432,173
`When there are no petitioners remaining in an inter partes review, the Board
`
`may terminate the proceeding entirely. 35 U.S.C. § 317(a); 37 C.F.R. § 42.72.
`
`Petitioners are the only petitioners in this inter partes review. Petitioners support
`
`termination of this proceeding. With no petitioner remaining in the proceeding and
`
`no final written decision on the merits, termination of this proceeding entirely is
`
`appropriate.
`
`The lawsuits between Patent Owner and Petitioners, involving the Patent-in-
`
`Suit have been dismissed. The parties do not contemplate any litigation or
`
`proceeding involving the Patent-in-Suit in the foreseeable future.
`
`III. No Future Participation by Petitioner
`
`Patent Owner and Petitioners will not be participating further in this
`
`proceeding.
`
`IV. Conclusion
`
`The parties have settled all disputes relating to the Patent-in-Suit. This inter
`
`partes review is in an early stage, and the Board has not entered a final written
`
`decision on the merits in this proceeding. Accordingly, the parties respectfully
`
`request the Board to terminate this proceeding in its entirety.
`
`Dated: December 23, 2021
`
`Respectfully submitted,
`
`
`
`/ Reza Mirzaie/
`Reza Mirzaie, Reg. No. 69,138
`
`
`
`
`
`
`
`
`3
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`
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`Case IPR2021-01128
`Patent No. 8,432,173
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e)(1))
`The undersigned hereby certifies that the above document was served on
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`December 23, 2021, by filing this document through the Patent Review Processing
`
`System as well as delivering a copy via electronic mail upon the following attorneys
`
`of record for the Petitioner:
`
`Tyler R. Bowen, Reg. No. 60,461
`tbowen@perkinscoie.com
`Heather Martin
`heathermartin@perkinscoie.com
`STMicroelectronics-
`NeodronIPRService@perkinscoie.com
`
`Date: December 23, 2021
`
` / Reza Mirzaie/
`
`RUSS AUGUST & KABAT
`Reza Mirzaie (Reg. No. 69,138)
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`
`Attorney for Patent Owner
`(310) 826-7474
`
`4
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`
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