Trials@uspto.gov
`571-272-7822
`
`Paper 10
`Date: September 8, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PDF SOLUTIONS, INC.,
`Petitioner,
`
`v.
`
`OCEAN SEMICONDUCTOR LLC,
`Patent Owner.
`
`
`IPR2022-01196
`Patent 6,836,691 B1
`
`
`
`
`
`
`
`
`
`
`Before SCOTT B. HOWARD, JOHN D. HAMANN, and DAVID COTTA,
`Administrative Patent Judges.
`
`HAMANN, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Settlement Prior to Institution of Trial
`37 C.F.R. § 42.74
`
`
`
`

`

`IPR2022-01196
`Patent 6,836,691 B1
`
`
`
`On June 30, 2022, PDF Solutions, Inc. (“Petitioner”) filed a Petition
`
`requesting inter partes review of U.S. Patent No. 6,836,691 (“the ’691
`
`patent”). Paper 1. On September 2, 2022, with our prior authorization,
`
`Petitioner filed a Motion to Dismiss its Petition. Paper 6 (motion). The
`
`motion was accompanied by Exhibit 1013, which Petitioner represents is “a
`
`true copy of any agreement or understanding between Petitioner and [Ocean
`
`Semiconductor LLC (‘Patent Owner’)] made in connection with, or in
`
`contemplation of, the dismissal of the Petition with this motion.” Paper 6, 1.
`
`The parties jointly request that Exhibit 1013 be treated business confidential
`
`information and kept as separate from the file of this inter partes review
`
`proceeding. Paper 7. In addition, during a conference call with the parties,
`
`we requested Patent Owner file, as business confidential information,
`
`Exhibit 2001, which is a separate agreement. Patent Owner agreed to file
`
`Exhibit 2001, and Petitioner stated that it did not object to its filing. In
`
`connection with filing Exhibit 2001, Patent Owner filed a Motion to Seal
`
`requesting that Exhibit 2001 be maintained under seal. Paper 8.1 Patent
`
`Owner represents that Petitioner does not oppose this motion. Id. at 3.
`
`In the Motion to Dismiss, Petitioner represents that the parties have
`
`met and conferred and that Patent Owner does not oppose Petitioner’s
`
`motion. Paper 6, 1. Petitioner further represents that other than a “Motion
`
`to Compel filed by Patent Owner against Petitioner as a third-party in the
`
`Northern District of California,” there are no pending disputes regarding the
`
`
`1 Patent Owner’s Motion requests that Exhibit 2001 be sealed under 37
`C.F.R. § 42.54(a). Based on the discussion in the conference call, and the
`circumstances under which Exhibit 2001 was filed, we treat this request
`under 37 C.F.R. § 42.74(c), which seems to better fit the facts under which
`Exhibit 2001 was filed than does 37 C.F.R. § 42.54(a).
`
`2
`
`

`

`IPR2022-01196
`Patent 6,836,691 B1
`
`[’691 patent].” Id. Finally, Petitioner represents that “[t]he parties do not
`
`anticipate any disputes between them concerning the [’691 patent].” Id.
`
`We have not yet issued an institution decision in this case. In view of
`
`the early stage of the proceedings, the fact that Patent Owner does not
`
`oppose dismissal, and Petitioner’s representation that the parties “do not
`
`anticipate any disputes” concerning the ’691 patent, we determine that good
`
`cause exists to end the proceeding.
`
`With respect to Exhibits 1013 and 2001, we have reviewed them and
`
`find that they should be treated as business confidential information and kept
`
`as separate from the file of this inter partes review proceeding pursuant to
`
`35 U.S.C. §§ 317(b) and 37 C.F.R. § 42.74(c).
`
`ORDER
`
`Accordingly, it is:
`
`ORDERED that the Motion to Dismiss is granted, and the proceeding
`
`is terminated prior to institution of trial pursuant to 37 C.F.R. §§ 42.73(a)
`
`and 42.74; and
`
`FURTHER ORDERED that Exs. 1013 and 2001 shall be kept
`
`separate from the files of the patent at issue in this proceeding, and made
`
`available only to Federal Government agencies on written request, or to any
`
`person on a showing of good cause, pursuant to 37 C.F.R. § 42.74(c).
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`3
`
`

`

`IPR2022-01196
`Patent 6,836,691 B1
`
`For PETITIONER:
`
`Daniel B. Ravicher
`Ognjan V. Shentov
`ZEISLER PLLC
`dan@zeisler-law.com
`oshentov@gmail.com
`
`
`For PATENT OWNER:
`
`Timothy Devlin
`Henrick Parker
`Alex Chan
`Joel W. Glazer
`DEVLIN LAW FIRM LLC
`TD-PTAB@devlinlawfirm.com
`hparker@devlinlawfirm.com
`achan@devlinlawfirm.com
`jglazer@devlinlawfirm.com
`
`4
`
`