Macronix International Co., Ltd.v.Spansion LLC

Patent Trial and Appeal Board

Feb 2, 2015

10091767 (P.T.A.B. Feb. 2, 2015)

Trials@uspto.gov Paper 11
Tel: 571-272-7822 Entered: February 2, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

MACRONIX INTERNATIONAL CO., LTD., MACRONIX ASIA
LIMITED, MACRONIX (HONG KONG) CO., LTD., and
MACRONIX AMERICA, INC.,
Petitioner,

v.

SPANSION LLC,
Patent Owner.
____________

Case IPR2014-00103 (Patent 6,369,416 B1)
Case IPR2014-00104 (Patent 6,459,625 B1)
Case IPR2014-00105 (Patent 6,731,536 B1)
Case IPR2014-01250 (Patent 6,731,536 B1)
Case IPR2014-00108 (Patent 7,151,027 B1)
Case IPR2014-00898 (Patent 7,151,027 B1)

Before HOWARD B. BLANKENSHIP, DEBRA K. STEPHENS,
KRISTEN L. DROESCH, JUSTIN T. ARBES, and RICHARD E. RICE,
Administrative Patent Judges.

ARBES, Administrative Patent Judge.
JUDGMENT
Termination of the Proceedings
37 C.F.R. § 42.72
IPR2014-00103, IPR2014-00104, IPR2014-00105, IPR2014-01250,
IPR2014-00108, IPR2014-00898

2

On January 28, 2015, the parties filed, in each of the instant
proceedings, a joint motion to terminate the proceeding on the basis of a
settlement reached by the parties. See 35 U.S.C. § 317(a); 37 C.F.R.
§ 42.72. The parties also filed a copy of their written settlement agreement
and a request that the settlement agreement be treated as business
confidential information under 35 U.S.C. § 317(b) and 37 C.F.R.
§ 42.74(c).
1

The parties’ joint motion to terminate was filed prior to the oral
hearings in Cases IPR2014-00103, IPR2014-00104, IPR2014-00105,
IPR2014-00108, and IPR2014-00898, and the Board has not made a final
decision on the merits in any of the proceedings. See 35 U.S.C. § 317(a).
Regarding Case IPR2014-01250, the Board has not yet determined whether
to institute an inter partes review. The parties represent that their
“settlement agreement has resolved all disputes involving the [four
challenged patents] between all the parties” in the related district court case
and International Trade Commission investigation, and that the parties will
be filing a motion to dismiss and a motion to terminate, respectively, in
those proceedings. Paper 35, 7–9. The parties further represent that there
are “no other petitions for inter partes review” and “no other litigations”
involving the challenged patents. Id. at 7. Given these facts, we determine
that it is appropriate to terminate the proceedings without rendering a final

1
See IPR2014-00103, Papers 33–35; IPR2014-00104, Papers 31–33;
IPR2014-00105, Papers 39–41; IPR2014-01250, Papers 8–10;
IPR2014-00108, Papers 42–44; IPR2014-00898, Papers 34–36. As the
papers are the same in each proceeding, we will refer to those filed in Case
IPR2014-00103 for convenience. We authorized the joint motion to
terminate in a conference call on January 26, 2015.
IPR2014-00103, IPR2014-00104, IPR2014-00105, IPR2014-01250,
IPR2014-00108, IPR2014-00898

3

written decision under 37 C.F.R. § 42.72. The oral hearings in all of the
instant proceedings are cancelled.
Regarding Case IPR2014-00105, we previously granted Patent
Owner’s motion to seal and ordered that Paper 24, Exhibits 2010–2021, and
the unredacted version of Exhibit 2005 be maintained under seal. See
IPR2014-00105, Paper 29, 6–7. The sealed materials were filed after
institution of trial and were not considered by the Board in instituting trial.
Given that we are not rendering a final written decision in the proceeding,
the sealed materials will be expunged from the record unless either party
objects within five business days by emailing the Board at
Trials@uspto.gov.
In consideration of the foregoing, it is hereby:
ORDERED that the parties’ joint request that the settlement
agreement be treated as business confidential information, kept separate
from the files of U.S. Patent No. 6,369,416 B1, U.S. Patent No. 6,459,625
B1, U.S. Patent No. 6,731,536 B1, and U.S. Patent No. 7,151,027 B1, 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), is granted;
FURTHER ORDERED that the joint motion to terminate the instant
proceedings is granted and the proceedings are hereby terminated; and
FURTHER ORDERED that, unless either party objects within five
business days of this Judgment, Paper 24, Exhibits 2010–2021, and the
unredacted version of Exhibit 2005 in Case IPR2014-00105 will be
expunged from the record of the proceeding.
IPR2014-00103, IPR2014-00104, IPR2014-00105, IPR2014-01250,
IPR2014-00108, IPR2014-00898

4

PETITIONER:

Michael M. Murray
Michael J. Scheer
Andrew R. Sommer
Steven M. Anzalone
WINSTON & STRAWN
mmurray@winston.com
mscheer@winston.com
asommer@winston.com
sanzalone@winston.com

PATENT OWNER:

J. Steven Baughman
Gabrielle E. Higgins
ROPES & GRAY LLP
steven.baughman@ropesgray.com
gabrielle.higgins@ropesgray.com