Trials@uspto.gov Paper 26
571-272-7822 Date: October 7, 2021
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
MICROCHIP TECHNOLOGY INCORPORATED and MICROSEMI
CORPORATION,
Petitioner,
v.
BELL SEMICONDUCTOR LLC,
Patent Owner.
IPR2021-00147 (Patent 8,288,269 B2)
IPR2021-00148 (Patent 8,049,340 B2)1
Before JO-ANNE M. KOKOSKI, JEFFREY W. ABRAHAM, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.
ABRAHAM, Administrative Patent Judge.
TERMINATION
Due to Settlement After Institution of Trial
35 U.S.C. § 317; 37 C.F.R. § 42.74
1 This Order addresses issues that are the same in all identified proceedings.
We exercise our discretion to issue one Order to be filed in each proceeding.
The parties, however, are not authorized to use this style heading in
subsequent papers.
IPR2021-00147 (Patent 8,288,269 B2)
IPR2021-00148 (Patent 8,049,340 B2)
2
I. INTRODUCTION
On May 24, 2021, pursuant to our May 21, 2021 e-mail authorization,
Petitioner and Patent Owner (collectively, “the Parties”) filed a Joint Motion
to Terminate in each of the above-identified proceedings. Paper 222 (“Joint
Motion”). In support of the Joint Motion, the Parties filed a copy of a
settlement agreement. Ex. 2033 (“Settlement Agreement”). Additionally,
the Parties jointly filed a Request to Treat Settlement Agreement
Confidential and Separate pursuant to 37 C.F.R. § 42.74(c) in each of the
above-identified proceedings. Paper 23 (“Joint Request”).
II. DISCUSSION
In the Joint Motion, the Parties represent that they have reached an
agreement to jointly seek termination of the above-identified inter partes
review proceedings, that the filed copy of the Settlement Agreement is a true
and correct copy of that agreement, and that there are no other agreements or
understandings between the parties made in connection with, or in
contemplation of, the termination of these proceedings. Paper 22, 1.
In view of the early stage of these proceedings and the settlement
between the Parties, we determine that good cause exists to terminate these
proceedings with respect to the Parties.
The Parties also filed a Joint Request that the Settlement Agreement
be treated as business confidential information and be kept separate from the
file of the patents involved in these inter partes proceedings. Paper 23, 1–2.
After reviewing the Settlement Agreement between Petitioner and Patent
2 Citations are to papers and exhibits filed in IPR2021-00147, unless
otherwise indicated. The Parties filed similar papers and exhibits in
IPR2021-00148.
IPR2021-00147 (Patent 8,288,269 B2)
IPR2021-00148 (Patent 8,049,340 B2)
3
Owner, we find that the Settlement Agreement contains confidential
business information regarding the terms of settlement. We determine that
good cause exists to treat the Settlement Agreement between Petitioner and
Patent Owner as business confidential information pursuant to 37 C.F.R.
§ 42.74(c).
This Order does not constitute a final written decision pursuant to 35
U.S.C. § 318(a).
III. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Joint Motion to Terminate IPR2021-00147 and
the Joint Motion to Terminate IPR2021-00148 are granted and the
proceedings are terminated; and
FURTHER ORDERED that the Joint Request to Treat Settlement
Agreement Confidential and Separate is granted, and the Settlement
Agreement shall be kept separate from the files of U.S. Patent Nos.
8,049,340 B2 and 8,288,269 B2 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).
IPR2021-00147 (Patent 8,288,269 B2)
IPR2021-00148 (Patent 8,049,340 B2)
4
For PETITIONER:
Bruce Slayden
Truman Fenton
Tecuan Flores
Brian Banner
SLAYDEN GRUBERT BEARD PLLC
bslayden@sgbfirm.com
tfenton@sgbfirm.com
tflores@sgbfirm.com
bbanner@sgbfirm.com
For PATENT OWNER:
Hong Zhong
IRELL & MANELLA LLP
hzhong@irell.com
Steven Hartsell
SKIERMONT DERBY LLP
shartsell@skiermontderby.com
