`Tel: 571-272-7822
`
`
`
`
`IPR2017-01841 Paper No. 53
`IPR2017-01842 Paper No. 12
`Entered: January 24, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY LTD.,
`Petitioner,
`
`v.
`
`GODO KAISHA IP BRIDGE 1,
`Patent Owner.
`____________
`
`Cases IPR2017-01841 and IPR2017-01842
`Patent 7,893,501 B2
`____________
`
`
`
`Before MELISSA A. HAAPALA, Acting Vice Chief Administrative Patent
`Judge, and JUSTIN T. ARBES, and JENNIFER MEYER CHAGNON,
`Administrative Patent Judges.
`
`CHAGNON, Administrative Patent Judge.
`
`
`ORDER
`Termination of the Proceedings
`35 U.S.C. § 317; 37 C.F.R. §§ 42.72, 42.74
`
`
`
`
`
`
`
`
`IPR2017-01841, IPR2017-01842
`Patent 7,893,501 B2
`
`
`On February 6, 2018, Case IPR2017-01842 was consolidated with
`Case IPR2017-01841, and an inter partes review was instituted as to
`challenged claims 1, 4–7, 9–19, 21, and 23–25 of U.S. Patent No. 7,893,501
`B2 (“the ’501 patent”).1 Paper 102; IPR2017-01842, Paper 10. The parties
`have filed numerous papers in this case, and we held an oral hearing on
`September 6, 2018. Although the proceedings are at a late stage of the trial,
`we have not yet entered a final written decision on the merits.
`On January 22, 2019, pursuant to 35 U.S.C. § 317(a), the parties filed
`a Joint Motion to Terminate these proceedings. Paper 50 (“Motion”). In the
`Motion, the parties indicate that they have reached a settlement related to
`the ’501 patent, and that there are no longer any disputes between the parties
`involving this patent. Id. at 1. The parties also filed a true copy of a
`settlement agreement along with a Joint Request to treat the settlement
`agreement as confidential, to be kept separate from the patent file under
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74. Paper 51; Ex. 2028. We
`authorized the filing of these papers in an e-mail sent on January 14, 2019.
`
`Under 35 U.S.C. § 317(a), an inter partes review proceeding shall be
`terminated with respect to any petitioner upon the joint request of the
`petitioner and the patent owner, unless the Patent and Trademark Office has
`decided the merits of the proceeding before the request for termination is
`filed. As previously noted, a final written decision on the merits has not yet
`
`
`1 The parties incorrectly indicate that “[t]he merits have not been decided
`because this proceeding is in a preliminary stage, that is, no decision on
`institution has been entered.” Paper 50, 1.
`2 Unless otherwise indicated, all citations are to papers and exhibits in
`IPR2017-01841.
`
`2
`
`
`
`IPR2017-01841, IPR2017-01842
`Patent 7,893,501 B2
`
`been entered. We, thus, determine it is appropriate to terminate the
`proceedings. 37 C.F.R. §§ 42.72, 42.74; see also Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012) (indicating
`there are strong public policy reasons to favor settlement between the parties
`to a proceeding). The Joint Motion to Terminate the proceedings is granted.
`
`
`Accordingly, it is
`
`ORDERED that the parties’ Joint Motion to Terminate the
`proceedings is granted;
`
`FURTHER ORDERED that the parties’ Joint Request that the
`settlement agreement (Ex. 2028) be treated as business confidential
`information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), to be kept
`separate from the patent file and made available only to Federal Government
`agencies on written request, or to any person on a showing of good cause, is
`granted; and
`FURTHER ORDERED that the proceedings are terminated.
`
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2017-01841, IPR2017-01842
`Patent 7,893,501 B2
`
`PETITIONER:
`
`David L. Cavanaugh
`Dominic E. Massa
`Michael H. Smith
`WILMER CUTLER PICKERING HALE AND DORR LLP
`david.cavanaugh@wilmerhale.com
`dominic.massa@wilmerhale.com
`michaelh.smith@wilmerhale.com
`
`
`PATENT OWNER:
`
`Gerald B. Hrycyszyn
`Richard F. Giunta
`Edmund J. Walsh
`WOLF, GREENFIELD & SACKS, P.C.
`ghrycyszyn-ptab@wolfgreenfield.com
`rgiunta-ptab@wolfgreenfield.com
`ewalsh-ptab@wolfgreenfield.com
`
`
`
`
`4
`
`
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