With the Board’s authorization, Petitioner and Patent Owner (collectively referred to as “the parties”) filed a Joint Motion to Terminate due to settlement in each of the above-identified proceedings.

The parties also filed a request to treat the Settlement Agreement as business confidential information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74.

The parties also “certify that there are no collateral agreements or understandings made in connection with, or in contemplation of, the termination of th[ese] inter partes review[s].” Id. at 6.

We determine that good cause exists to treat the Settlement Agreement between Petitioner and Patent Owner as business confidential information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).

In consideration of the foregoing, it is hereby: ORDERED that the parties’ Joint Request to treat the Settlement Agreement as business confidential information under 37 C.F.R. § 42.74(c) is granted, and the Settlement Agreement (Exhibit 1021 in both cases) shall be kept separate from the files of Patents 8,924,899 B2 and 9,367,657 B2, and made available only to Federal Government agencies on written request, IPR2024-00476 (Patent 8,924,899 B2) IPR2024-00566 (Patent 9,367,657 B2) 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); and FURTHER ORDERED that the parties’ Joint Motion to Terminate (Paper 17 in both proceedings) is granted, and the above-identified proceedings are terminated.

Before MICHAEL W. KIM, Acting Deputy Chief Administrative Patent Judge.

1 This Order addresses a panel change pertaining to the above-referenced proceedings.

The parties are not permitted to use this caption unless authorized by the Board.

Due to unavailability, Administrative Patent Judge Brian D. Range replaces Administrative Patent Judge Donna M. Praiss on the panel.

Thus, Administrative Patent Judges Brian J. McNamara, Christopher M. Kaiser, and Brian D. Range now constitute the panel for consideration of all matters in these proceedings.

Before KATHERINE K. VIDAL, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.

The Office received a request for Director Review of the Decision Granting Institution for the above-captioned case.

The request was referred to me.

Upon consideration of the request, it is: ORDERED that the request for Director Review is denied.

Before KATHERINE K. VIDAL, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.

The Office received a request for Director Review of the Decision Granting Institution for the above-captioned case.

The request was referred to me.

Upon consideration of the request, it is: ORDERED that the request for Director Review is denied.

“While the sequence of these questions might be reordered in any particular case,” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 407 (2007), the U.S. Court of Appeals for the Federal Circuit has repeatedly emphasized that “it is error to reach a conclusion of obviousness until all those factors are considered,” WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1328 (Fed. Cir. 2016).

Patent 8,924,899 B2 case, and one or more of these or other factors may predominate in a particular case.” Id. Petitioner contends that one of ordinary skill in the art would be “familiar with automated circuit design” and “possess[] this knowledge through training and work experience, including have a Bachelor’s or Master’s Degree in computer science, electrical engineering, or a related field, with at least three years of practical experience.” Pet. 11–12.

The six Fintiv factors that the Board considers as part of this 4 If either party intends to further argue claim construction at trial, including what is the plain and ordinary meaning of a term, they should do so in a clearly designated section of their briefing so as to expressly identify such arguments.

Patent 8,924,899 B2 Banerjee should be interpreted to limit Banerjee’s disclosure (which, as discussed above, includes a teaching that the operating system is compiled and instantiated in the designed device) to merely outputting a hardware description file.

After reviewing Petitioner’s arguments and information regarding the limitations identified immediately above, including the Houh Declaration, which are not addressed by Patent Owner at this stage (see Prelim. Resp.; Prelim. Sur-Reply), we are persuaded that Petitioner sufficiently demonstrates, for purposes of this Decision, that the preamble of claim 1 and

For example, reasonable expenses and attorneys’ fees incurred by any party may be levied on a person who impedes, delays, or frustrates the fair examination of a witness.

To satisfy this requirement, Patent Owner should request a conference call with the Board no later than two weeks prior to DUE DATE 1.

The Board defines a LEAP practitioner as a patent agent or attorney having three (3) or fewer substantive oral arguments in any federal tribunal, including PTAB.

All practitioners are expected to have a command of the factual record, the applicable law, and Board procedures, as well as the authority to commit the party they represent.

A combined LEAP Practitioner Request for Oral Hearing Participation and Verification Form is available at www.uspto.gov/leap.

At the conference, Petitioner requested permission to file a ten (10) page brief and an accompanying declaration from its expert of equal page length to address why the asserted prior art references disclose the claim limitation “outputting by the processor software programming commands to be executed by the hardware integrated circuit for controlling the electronic device.” Petitioner stated that briefing was not being requested to explain why Petitioner’s proposed stipulation resolves the Fintiv related issues.

The Board authorized each party to file a brief of no more than ten (10) pages in length limited to: (a) the proper claim construction of the term “outputting by the processor software programming commands to be executed by the hardware integrated circuit for controlling the electronic device,” (2) the impact that the asserted claim construction has on understanding the asserted prior art references, and (3) the impact of Petitioner’s proposed stipulation on the Fintiv related issues.

The Board determined that no new evidence may be submitted with the permitted briefing, but directed Petitioner to file the proposed stipulation as an exhibit in each proceeding.

It is hereby ordered that: Petitioner may file within ten (10) calendar days from May 31, 2024, a Preliminary Reply of no more than ten (10) pages in length limited to: (1) the proper claim construction of the term “outputting by the processor software programming commands to be executed by the hardware integrated circuit for controlling the electronic device,” (2) the impact that the asserted IPR2024-00476 (Patent 8,924,899 B2) IPR2024-00566 (Patent 9,367,657 B2) claim construction has on understanding the asserted prior art references, and (3) the impact of Petitioner’s proposed stipulation on the Fintiv related issues.

Patent Owner may file a Preliminary Sur-Reply of no more than ten (10) pages in length within ten (10) calendar days from receipt of Petitioner’s Preliminary Reply directed to (1) the proper claim construction of the term “outputting by the processor software programming commands to be executed by the hardware integrated circuit for controlling the electronic device,” (2) the impact that the asserted claim construction has on understanding the asserted prior art references, and (3) the impact of Petitioner’s proposed stipulation on the Fintiv related issues.