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Dell Inc. v. NXP B.V.

Docket IPR2015-01308, Patent Trial and Appeal Board (May 29, 2015)
Donna Praiss, Michael Fitzpatrick, Minn Chung, presiding
Case TypeInter Partes Review
Patent
8204959
Petitioner Dell Inc.
Patent Owner NXP B.V.
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10 Termination Settlement: Judgment

Document IPR2015-01308, No. 10 Termination Settlement - Judgment (P.T.A.B. Oct. 29, 2015)
Patent Owner, NXP B.V., filed a Preliminary Response pursuant to 35 U.S.C. § 313.
On October 21, 2015, prior to our decision on institution and upon receiving leave to do so, the parties filed a “Joint Motion to Terminate” based on a settlement agreement that resolves the parties’ dispute related to the involved patent.1 Paper 7.
The parties also filed a copy of the settlement agreement (Paper 9) along with a “Joint Request To File Settlement Agreement As Business Confidential.” Paper 8; see also 37 C.F.R. § 42.74(c) (“A party to a settlement may request that the settlement be treated as business confidential information and be kept separate from the files of an involved patent or application.”).
Accordingly, it is: ORDERED that the Petition is dismissed; and FURTHER ORDERED that the settlement agreement (Paper 9) be treated as business confidential information and be kept separate from the files of the involved U.S. Patent No. 8,204,959 B2.
1 Technically, during a conference call on October 20, 2015, leave was granted to file a joint motion to dismiss the petition, not to terminate a proceeding that is yet to be instituted.
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5 Notice of Filing Date Accorded to Petition: Notice of Filing Date Accorded to Petition

Document IPR2015-01308, No. 5 Notice of Filing Date Accorded to Petition - Notice of Filing Date Accorded to Petition (P.T.A.B. Jun. 19, 2015)
Patent Owner may file a preliminary response to the petition no later than three months from the date of this notice.
For more information, please consult the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012), which is available on the Board Web site at http://www.uspto.gov/PTAB.
Patent Owner is advised of the requirement to submit mandatory notice information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of the petition.
The parties are advised that under 37 C.F.R. § 42.10(c), recognition of counsel pro hac vice requires a showing of good cause.
The parties are reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in the Patent Review Processing System (PRPS), accessible from the Board Web site at http://www.uspto.gov/PTAB.
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7 Motion: Joint Motion to Terminate Proceedings

Document IPR2015-01308, No. 7 Motion - Joint Motion to Terminate Proceedings (P.T.A.B. Oct. 21, 2015)
During that call, Petitioner and Patent Owner confirmed to the Board that the parties had reached a settlement agreement resolving all disputes between them involving the patents-at-issue noted above, and sought guidance and permission to file a motion to terminate these proceedings.
Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), Petitioner and Patent Owner have filed herewith a true copy (including counterparts) of the confidential settlement agreement.
Furthermore, termination will save significant further expenditure of resources by the Board, and will further the purpose of IPR proceedings to provide an efficient and less costly alternative forum for patent disputes (including by encouraging settlement).
Petitioner and Patent Owner are available at the Board’s convenience to discuss these related matters in more detail or answer any additional questions raised by this joint motion.
October 21, 2015 By: /Kevin J. Meek/ __________ Kevin J. Meek (Lead Counsel) Reg. No. 33,738 Baker Botts L.L.P. 98 San Jacinto Blvd., Suite 1500 Austin, Texas 78701
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1 Petition: PETITION FOR INTER PARTES REVIEW OF CLAIMS 1 20 OF US PATENT NO 8,204,959

Document IPR2015-01308, No. 1 Petition - PETITION FOR INTER PARTES REVIEW OF CLAIMS 1 20 OF US PATENT NO 8,204,959 (P.T.A.B. May. 29, 2015)

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8 Notice: Joint Request to File Settlement Agreement as Business Confidential Info...

Document IPR2015-01308, No. 8 Notice - Joint Request to File Settlement Agreement as Business Confidential Information (P.T.A.B. Oct. 21, 2015)

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6 Preliminary Response: Patent Owners Preliminary Response

Document IPR2015-01308, No. 6 Preliminary Response - Patent Owners Preliminary Response (P.T.A.B. Sep. 18, 2015)

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4 Notice: Related Matters

Document IPR2015-01308, No. 4 Notice - Related Matters (P.T.A.B. Jun. 17, 2015)

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