Dell Inc.v.NXP B.V.

Patent Trial and Appeal Board

Oct 29, 2015

10015722 (P.T.A.B. Oct. 29, 2015)

Trials@uspto.gov Paper 16
571-272-7822 Date: October 29, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

DELL INC.,
Petitioner,

v.

NXP B.V.,
Patent Owner.

Cases IPR2015-01082 and IPR2015-01083
1

Patent No. 6,590,365 B2

Before HOWARD B. BLANKENSHIP, DONNA M. PRAISS, and
GEORGIANNA W. BRADEN, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION
Joint Motion to Terminate

1
This caption is being used because the decision involves the same issue in both
cases. This caption may be used by the parties if the contents of the paper to be
filed in each proceeding is identical.
IPR2015-01082 and IPR2015-01083
Patent No. 6,590,365 B2

2

37 C.F.R. § 42.72

On October 21, 2015, the parties filed a “Joint Motion to Terminate
Proceedings Pursuant to 35 U.S.C. § 317” (Paper 13), and “Joint Request to File
Settlement Agreement as Business Confidential Information Pursuant to 35 U.S.C.
§ 317” (Paper 14) in each of the captioned proceedings.
2
The parties also filed a
true copy (including counterparts) of their written settlement agreement (Paper 15).
The parties aver that there are no collateral agreements. Paper 13, 2.
A decision on institution has not been entered in either of these proceedings.
Thus, these proceedings are each in its preliminary stage. The parties indicate the
following with respect to their disputes involving U.S. Patent 6,590,365 B2 (“the
’365 patent”):
The parties have settled their related disputes before the International Trade
Commission and the United States District Court for the District of Delaware and
have reached agreement to terminate these IPRs. Paper 13, 5–6. In accordance
with 37 C.F.R. § 42.20(b), the parties sought, and received, authorization from the
Board to file this motion on October 20, 2015. Id. at 1–2.
Based on the facts in these proceedings, termination is proper because the
parties are jointly requesting termination and the Office has not yet “decided the
merits of the proceeding before the request for termination is filed.” 35 U.S.C.
§ 317(a). Indeed, these IPR proceedings have not yet been instituted. Paper 13, 3.
Under these circumstances, we determine that it is appropriate to terminate the
proceedings. See 37 C.F.R. §§ 42.5(a), 42.71(a). This paper does not constitute a
final written decision pursuant to 35 U.S.C. § 318(a).

2
Citations herein are to each of the captioned proceedings in which the identical
papers were filed on the same day and as the same paper number in each of
proceeding IPR2015-01082 and IPR2015-01083.
IPR2015-01082 and IPR2015-01083
Patent No. 6,590,365 B2

3

It is
ORDERED that the parties’ “Joint Motion to Terminate Proceedings
Pursuant to 35 U.S.C. § 317” is granted to the extent that proceedings IPR2015-
01082 and IPR2015-01083 are terminated; and
FURTHER ORDERED that the settlement agreement (Paper 15) will be
treated as business confidential information, kept separate from the file of the
involved patent, and made available only to Federal Government agencies on
written request, or to any person on a showing of good cause under 35 U.S.C.
§ 317(b) and 37 C.F.R. § 42.74(c).
.

IPR2015-01082 and IPR2015-01083
Patent No. 6,590,365 B2

4

For PETITIONER:

Kevin J. Meek
Paula D. Heyman
Stephanie N. DeBrow
BAKER BOTTS
Kevin.meek@bakerbotts.com
Paula.heyman@bakerbotts.com
Stephanie.debrow@bakerbotts.com

For PATENT OWNER:

J. Steven Baughman
Mark Rowland
James L. Davis, Jr.
ROPES & GRAY LLP
Steven.baughman@ropesgray.com
Mark.rowland@ropesgray.com
James.l.davis@ropesgray.com