`571-272-7822
`
`
`
`
`
`
`Paper 45
`Entered: September 28, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________________
`
`APPLIED MATERIALS, INC. and STMICROELECTRONICS, INC.,1
`Petitioner,
`
`v.
`
`OCEAN SEMICONDUCTOR LLC,
`Patent Owner.
`_____________________________
`
`IPR2021-01342 (Patent 6,968,248 B1)
`IPR2021-01344 (Patent 6,907,305 B2)
`_____________________________
`
`
`
`Before MIRIAM L. QUINN, JOHN D. HAMANN, and DAVID COTTA,
`Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`TERMINATION OF STMICROELECTRONICS
`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
`I.
`INTRODUCTION
`
`
`1 STMicroelectronics filed a motion for joinder and a petition in IPR2022-00681,
`which we granted, and we joined STMicroelectronics to IPR2021-01342.
`STMicroelectronics also filed a motion for joinder and a petition in IPR2022-
`00680, which we granted, and we joined STMicroelectronics to IPR2021-01344.
`
`
`
`IPR2021-01342 (Patent 6,968,248 B1)
`IPR2021-01344 (Patent 6,907,305 B2)
`
`
`STMicroelectronics, Inc. and Ocean Semiconductor LLC (collectively “the
`Parties”) have requested that the above-identified inter partes review proceedings
`be terminated with respect to STMicroelectronics, Inc. pursuant to a settlement.
`Upon authorization by the Board on September 21, 2022, the Parties filed a Joint
`Motion to Terminate the above-captioned proceedings. IPR2021-01342, Paper 42
`(“Joint Motion”); see also IPR2021-01344, Paper 42 (identical motion to the paper
`filed in IPR2021-01342). The Parties also filed a copy of the Settlement
`Agreement (Ex. 2045 in IPR2021-01342 and IPR2021-01344, “Settlement
`Agreement”) and filed a Joint Request to Keep Separate (Paper 43 in IPR2021-
`01342 and IPR2021-01344, “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.”
`In the Joint Motion, the Parties jointly request termination of the joined inter
`partes review proceeding. The parties represent that they have reached a
`settlement, that a true copy of the settlement agreement was filed as an exhibit, and
`that there are no other agreements between the parties made in connection with, or
`in contemplation of, the termination. Joint Motion 1–3. The Parties also represent
`that the district court litigation between the parties has been dismissed with
`prejudice. Joint Motion 34.
`We instituted granted STMicroelectronics petitions and granted its motions
`for joinder on September 2, 2022. IPR2021-01342, Paper 36; IPR2021-01344,
`Paper 36. We have not yet decided the merits of the proceeding, and a final
`written decision has not been entered. Notwithstanding that the proceeding has
`2
`
`
`
`
`
`IPR2021-01342 (Patent 6,968,248 B1)
`IPR2021-01344 (Patent 6,907,305 B2)
`
`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 the involved
`patents. Joint Request 1. After reviewing the Settlement Agreement between the
`Parties, we find that the Settlement Agreement contain confidential business
`information regarding the terms of settlement. We determine that good cause
`exists to treat the Settlement Agreement 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 in each captioned proceeding is granted,
`and that IPR2021-01342 and IPR2021-01344 are hereby terminated with respect
`only to Petitioner STMicroelectronics, Inc.; and
`
`FURTHER ORDERED that the Joint Request is granted, and the Settlement
`Agreement shall be kept separate from the file of Patent 6,968,248 B1 and
`6,907,305 B2, 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
`
`
`
`IPR2021-01342 (Patent 6,968,248 B1)
`IPR2021-01344 (Patent 6,907,305 B2)
`
`For PETITIONER:
`
`Eric A. Krause
`Pan C. Lee
`AXINN, VELTROP & HARKRIDER LLP
`ekrause@axinn.com
`plee@axinn.com
`
`For PATENT OWNER:
`
`Timothy Devlin
`Alex Chan
`Joel Glazer
`DEVLIN LAW FIRM LLC
`TD-PTAB@devlinlawfirm.com
`achan@devlinlawfirm.com
`jglazer@devlinlawfirm.com
`
`
`
`
`
`4
`
`
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