`571.272.7822
`
`Paper No.13
`Filed: January 24, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TEXAS INSTRUMENTS, INC.
`Petitioner,
`
`Vv.
`
`SEMCONIP INC.,
`Patent Owner.
`
`Case IPR2017-01425
`Patent 5,978,876
`
`Before BRYAN MOORE, STACEY G. WHITE,and
`KIMBERLY McGRAW,Administrative Patent Judges.
`
`McGRAW,Administrative Patent Judge.
`
`DECISION
`Joint Motion to Terminate
`37 CFR. $$ 42.5(a), 42.72
`
`
`
`IPR2017-01425
`Patent 5,978,876
`
`On January 11, 2018, Texas Instruments,Inc. (“Petitioner”) and
`
`SemconIP, Inc. (“Patent Owner”) filed a Joint Motion to Terminate
`
`Proceeding (“Motion to Terminate”) stating the parties havesettled their
`dispute over U.S. Patent No. 5,978,876 (‘the °876 patent”). Paper 11, 1.
`
`Theparties also state that they “havesettled their related district court
`
`litigation, and the case has been dismissed with prejudice. Semcon IP Inc.v.
`Huawei Device USA Inc. et al., No 4:16-cv-01729, Order Granting Agreed
`
`Motion to Dismiss With Prejudice Texas Instruments Incorporated, (E.D.
`Tex. January 11, 2018) (D.I. 502)”). Jd!
`The parties representtheir settlement agreement has been madein
`writing, a true and correct copy of whichis filed separately as Exhibit 2003
`(“Settlement Agreement’), and that the Settlement Agreementrepresentsall
`agreements made in connection with, or in contemplationof, the termination
`of this proceeding.
`/d. Theparties also filed a joint motion requesting that
`the Settlement Agreementbe treated as business confidential information
`pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 12.
`This matter is at a stage prior to its final hearing and no decision on
`the merits has been made. The motionfor joinderfiled in Case IPR2017-
`
`01432, seeking joinder with the present proceeding, has been denied.
`Based onthe facts of this case,it is appropriate to terminate the
`proceedings with respect to both parties without rendering a final written
`decision. See 35 U.S.C. § 317(a); 37 C.F.R §§ 42.72, 42.74. Therefore, the
`
`' It appears that the case numberlisted aboveis a typographical error and the
`correct case numberis 2:16-cv-00437. See Ex. 3001 (Semcon IP Inc. v.
`Huawei Device USA Inc. et al., No 2:16-cv-00437, Order Granting Agreed
`Motion to Dismiss With Prejudice, (E.D. Tex. January 11, 2018) (D.I. 502)).
`
`2
`
`
`
`IPR2017-01425
`Patent 5,978,876
`
`joint motion to terminate the proceeding is granted. This paper does not
`constitute a final written decision pursuant to 35 U.S.C. § 318(a).
`
`Accordingly,it is:
`ORDEREDthatthe joint motion to terminate the proceedingis
`
`GRANTEDandthe proceeding is terminated with respect to both the
`
`Petitioner and the Patent Owner; and
`
`FURTHER ORDEREDthatthe confidential settlement agreementbe
`treated as business confidential information under 35 U.S.C. § 317(b) and
`
`37 C.F.R. § 42.74(c) and be kept separate from the file of the patent.
`
`
`
`IPR2017-01425
`Patent 5,978,876
`
`For PETITIONER:
`
`Joshua A. Griswold
`Tuenlap D. Chan
`ThomasH.Reger,II
`FISH & RICHARDSONP.C.
`griswold@fr.com
`d-chan@ti.com
`reger@fr.com
`
`PATENT OWNER:
`
`Peter Lambrianakos
`Vincent J. Rubino, ITI
`Enrique W.Iturralde
`BROWN RUDNICK LLP
`plambrianakos@brownrudnick.com
`vrubino@brownrudnick.com
`eiturralde@brownrudnick.com
`
`
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