Marvell Semiconductor, Inc.v.Bandspeed, Inc.

Patent Trial and Appeal Board

Sep 17, 2015

11397443 (P.T.A.B. Sep. 17, 2015)

Trials@uspto.gov Paper 20
571-272-7822 Entered: September 17, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

MEDIATEK INC. and MEDIATEK USA, INC.,
Petitioner,

v.

BANDSPEED, INC.,
Patent Owner.
____________

Case IPR2015-00314 (Patent 7,477,624 B2)
Case IPR2015-00315 (Patent 7,477,624 B2)
Case IPR2015-00316 (Patent 7,477,624 B2)
Case IPR2015-00531 (Patent 8,542,643 B2)
1

____________

Before BART A. GERSTENBLITH, DAVID C. McKONE, and
PATRICK M. BOUCHER, Administrative Patent Judges.

BOUCHER, Administrative Patent Judge.

DECISION
Joint Motions to Terminate
37 C.F.R. § 42.74

1
This Order addresses the same issue in four captioned inter partes reviews.
The parties are not authorized to use this style of filing in subsequent papers
without prior authorization.
IPR2015-00314 (Patent 7,477,624 B2)
IPR2015-00315 (Patent 7,477,624 B2)
IPR2015-00316 (Patent 7,477,624 B2)
IPR2015-00531 (Patent 8,542,643 B2)

On August 5, 2015, the parties filed Joint Motions to Terminate each
of the captioned proceedings. Paper 17.
2
For each proceeding, the parties
represent that “the dispute between the parties has been resolved, and
further, the parties have agreed to terminate this inter partes review.” Id.
at 2. With each of their Motions to Terminate, the parties filed what they
represent is “a true copy of their written agreement as Exhibit 1018.” Id. In
concurrently filed Joint Motions to Seal, the parties request that the
agreement be treated as business confidential information and be kept
separate from the file of the involved patent. Paper 18.
These proceedings are related to IPR2015-1577, IPR2015-01580,
IPR2015-01581, and IPR2015-01582 (“the related proceedings”). In each of
the related proceedings, a petition was filed by Qualcomm Incorporated on
July 12, 2015, with a motion to join a respective one of these proceedings.
Papers 1, 2 in each of the related proceedings. We note that the joinder
motions in the related proceedings were filed before the instant motions to
terminate were filed in these proceedings. Patent Owner opposes the joinder
motions in the related proceedings. Paper 8 in each of the related
proceedings. If the joinder motions are not granted, the related proceedings
are barred under 35 U.S.C. § 315(b). See 35 U.S.C. § 315(c). Patent Owner
has not yet filed a preliminary response in any of the related proceedings, the
deadline for which is October 28, 2015, nor sought to expedite the related
proceedings by filing a waiver under 37 C.F.R. § 42.107(b). It is thus

2
Citations are to IPR2015-00314.
IPR2015-00314 (Patent 7,477,624 B2)
IPR2015-00315 (Patent 7,477,624 B2)
IPR2015-00316 (Patent 7,477,624 B2)
IPR2015-00531 (Patent 8,542,643 B2)

premature to decide the joinder motions in the related proceedings. See
35 U.S.C. § 315(c).
Nevertheless, we discern no compelling interest to be served by
delaying termination of these proceedings with respect to MediaTek Inc. and
MediaTek USA, Inc., both of which have settled with Patent Owner. See
35 U.S.C. § 317 (“An inter partes review instituted under this chapter shall
be terminated with respect to any petitioner upon the joint request of the
petitioner and the patent owner unless the Office has decided the merits of
the proceeding before the request for termination is filed” (emphasis
added)). These proceedings are at an early stage, and no motions are
pending in any of these proceedings. Under these circumstances, we
determine that it is appropriate to terminate these proceedings with respect to
MediaTek Inc. and MediaTek USA, Inc. We exercise the discretion
afforded under 35 U.S.C. § 317(a) to decline, at this time, to terminate these
proceedings with respect to Patent Owner. Because no petitioner remains in
these proceedings, we vacate the Scheduling Order in each proceeding
(Paper 13 in IPR2015-00314, IPR2015-00316, and IPR2015-00531; and
Paper 15 in IPR2015-00315). If necessary, we will revisit scheduling for
these proceedings after decisions on the joinder motions are made in the
related proceedings. If appropriate, we will also revisit the Motions to
Terminate as to Patent Owner after ruling on the motions for joinder in the
related proceedings.
The Joint Motions to Seal are granted to the extent that they request
that the agreement be treated as business confidential information and be
kept separate from the patent files under 37 C.F.R. § 42.74(c) but otherwise
IPR2015-00314 (Patent 7,477,624 B2)
IPR2015-00315 (Patent 7,477,624 B2)
IPR2015-00316 (Patent 7,477,624 B2)
IPR2015-00531 (Patent 8,542,643 B2)

denied. The requests should not have been filed as “Motions to Seal,” which
has other meaning, under 37 C.F.R. § 42.14, with respect to the underlying
document in the context of the proceeding, e.g., expungement or made
public under certain circumstances.

Accordingly, it is
ORDERED that the Joint Motions to Terminate the captioned
proceedings are granted with respect to MediaTek Inc. and MediaTek USA,
Inc.;
FURTHER ORDERED that the agreement (Ex. 1018) be treated as
business confidential information and be kept separate from the file of the
involved patent, under 37 C.F.R. § 42.74(c);
FURTHER ORDERED that the Scheduling Order in each proceeding
(Paper 13 in IPR2015-00314, IPR2015-00316, and IPR2015-00531; and
Paper 15 in IPR2015-00315) is vacated; and
FURTHER ORDERED that each of the captioned proceedings will
continue with respect to Bandspeed, Inc.

IPR2015-00314 (Patent 7,477,624 B2)
IPR2015-00315 (Patent 7,477,624 B2)
IPR2015-00316 (Patent 7,477,624 B2)
IPR2015-00531 (Patent 8,542,643 B2)

FOR PETITIONER:

Lori Gordon
Lgordon-PTAB@skgf.com

Robert Sokohl
Rsokohl-PTAB@skgf.com

Jeffrey Helvey
Jhelvey-PTAB@skgf.com

FOR PATENT OWNER:

Gregory Donahue
gdonahue@dpelaw.com

David Simmons
Davidsimmons1@sbcglobal.net