GSI Technology, Inc.v.CYPRESS SEMICONDUCTOR CORPORATION

Patent Trial and Appeal Board

Jun 5, 2015

09878434 (P.T.A.B. Jun. 5, 2015)

Trials@uspto.gov Paper 31
571-272-7822 Entered: June 5, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

GSI TECHNOLOGY, INC.,
Petitioner,
v.
CYPRESS SEMICONDUCTOR CORPORATION,
Patent Owner.

_______________

IPR2014-00426 (Patent 6,445,645)
IPR2014-00427 (Patent 6,385,128)

_______________

Before MIRIAM L. QUINN, WILLIAM V. SAINDON, and
KEVIN W. CHERRY, Administrative Patent Judges.

QUINN, Administrative Patent Judge.

JUDGMENT
Termination of Proceeding
37 C.F.R. § 42.72
IPR2014-00426 (Patent 6,445,645)
IPR2014-00427 (Patent 6,385,128)

2
On May 13, 2015, the parties filed a joint motion to terminate the
instant proceedings pursuant to a settlement agreement. Paper 251. The
parties also filed a true copy of their written settlement agreement, made in
connection with the termination of the instant proceedings, in accordance
with 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b). Paper 27. The parties
further submitted a joint request to have their settlement agreement treated
as confidential business information under 35 U.S.C. § 317(b) and 37 C.F.R.
§ 42.74(c). Paper 26. At the request of the panel, the parties also filed a
certification that no collateral agreements exist, such that the Settlement
Agreement filed on May 13, 2015, as paper 27, is the only agreement
between the parties. Paper 30.
We have held the oral hearing in the instant proceedings, but have not
yet entered a final written decision. The parties allege that the Settlement
Agreement resolves all claims between the parties in the district court
litigation where the challenged patents were at issue. Paper 25, 1. The
parties do not argue why termination is appropriate at this stage of the
proceedings. We take note, however, that the related district court litigation
has been dismissed with prejudice as of May 7, 2015. Paper 25, Ex. B.
Upon consideration of the requests before us, we determine that, even
at this late stage of the proceedings, terminating with respect to both
Petitioner and Patent Owner releases sufficient of the Board’s limited

1 The parties filed identical papers in both of the captioned proceedings.
Therefore, reference to the filed documents points to the papers filed in case
IPR2014-00426.
IPR2014-00426 (Patent 6,445,645)
IPR2014-00427 (Patent 6,385,128)

3
resources. Based on the facts of this case, it is appropriate to enter
judgment.2 See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72.
Accordingly, it is:
ORDERED that the joint motion to terminate IPR2014-00426 and
IPR2014-00427 is granted;
FURTHER ORDERED that the instant proceedings are hereby
terminated as to all parties, including Petitioner and Patent Owner; and
FURTHER ORDERED that the parties’ joint request that the
settlement agreement be treated as business confidential information, kept
separate from the patent files, and made available only to Federal
Government agencies on written request, 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), is
granted.

2 A judgment means a final written decision by the Board, or a termination
of a proceeding. 37 C.F.R. § 42.2.
IPR2014-00426 (Patent 6,445,645)
IPR2014-00427 (Patent 6,385,128)

4

PETITIONER:

Brent Yamashita
Gerald Sekimura
DLA Piper LLP
brent.yamashita@dlapiper.com
gerald.sekimura@dlapiper.com

PATENT OWNER:

David M. Hoffman
Thomas Halkowski
Fish & Richardson
hoffman@fr.com
halkowski@fr.com