Micron Technology, Inc.v.e.Digital Corporation

Patent Trial and Appeal Board

Jun 8, 2015

08884245 (P.T.A.B. Jun. 8, 2015)

Trials@uspto.gov Paper 21
571-272-7822 Entered: June 8, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

MICRON TECHNOLOGY, INC. and
MICRON CONSUMER PRODUCTS GROUP, INC.,
Petitioner,

v.

E.DIGITAL CORPORATION,
Patent Owner.

Case IPR2015-00519
Patent 5,839,108
____________

Before LYNNE E. PETTIGREW, DAVID C. MCKONE, and
KRISTINA M. KALAN, Administrative Patent Judges.

KALAN, Administrative Patent Judge.

TERMINATION
Dismissing the Proceeding
37 C.F.R. § 42.5(a), 37 C.F.R. § 42.71(a)

IPR2015-00519
Patent 5,839,108

2
The parties have requested that the above-captioned proceeding be
terminated pursuant to a settlement. The Board authorized the parties to file
a joint motion to terminate the above-captioned proceeding on June 2, 2015.
On June 2, 2015, and pursuant to 35 U.S.C. § 317, the parties filed a
joint motion to terminate the above-captioned proceeding (Paper 19), along
with a copy of the settlement agreement (Ex. 1021). The joint motion to
terminate included a request to treat the settlement agreement as business
confidential information, to be kept separate from the patent file pursuant to
35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 19, 8.
Generally, the Board expects that a proceeding will terminate after the
filing of a settlement agreement. See, e.g., Office Patent Trial Practice
Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). This case is in the
preliminary proceeding stage. A preliminary proceeding begins with the
filing of a petition for instituting a trial and ends with a written decision as to
whether trial will be instituted. See 37 C.F.R. § 42.2. Petitioner filed a
Petition on December 31, 2014. Patent Owner filed a Preliminary Response
on April 29, 2015. No decision whether to institute a trial has been made.
The joint motion to terminate indicates that the parties have settled all
of their disputes involving U.S. Patent No. 5,839,108 (“the ’108 patent”).
Paper 19, 1. The joint motion to terminate further indicates that no dispute
remains between the parties involving the ’108 patent, and the parties “have
agreed to jointly request termination of all of this IPR.” Id. at 3. The parties
represent that they have agreed to settle and dismiss their related district
court litigation, e.Digital Corporation v. Micron Consumer Products Group,
Inc., Case No. 3:13-cv-02907-H-BGS (S.D. Cal.), and e.Digital Corporation
IPR2015-00519
Patent 5,839,108

3
v. Micron Technology, Inc., Case No. 3:13-cv-2944-H-BGS (S.D. Cal.).
Id. at 1.
Based on the facts of the case, and in view of the parties’ joint request
for termination of this proceeding, we determine that it is appropriate to
dismiss the petition as to both Petitioner and Patent Owner without rendering
either a decision to institute or a final written decision. See 37 C.F.R.
§§ 42.5(a); 42.71(a). Therefore, the joint motion to terminate and the
request to treat the settlement agreement as business confidential
information are granted. This paper does not constitute a final written
decision pursuant to 35 U.S.C. § 318(a).
Accordingly, it is
ORDERED that the joint motion to treat the settlement agreement as
business confidential information, to be kept separate from the patent file, is
granted;
FURTHER ORDERED that the joint motion to terminate the
proceeding is granted; and
FURTHER ORDERED that the Petition for Inter Partes Review of
the above-referenced patent is dismissed.

IPR2015-00519
Patent 5,839,108

4
FOR PETITIONER:

David Maiorana
Matthew Ferry
JONES DAY
dmaiorana@JonesDay.com
mferry@jonesday.com

FOR PATENT OWNER:

Robert E. Purcell
THE LAW OFFICE OF ROBERT E. PURCELL, PLLC
rpurcell@repurcelllaw.com