Neodron, Ltd.

Patent Trials and Appeals Board

Jan 4, 2022

IPR2021-01128 (P.T.A.B. Jan. 4, 2022)

Trials@uspto.gov Paper 10 571-272-7822 Entered: January 4, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ CYPRESS SEMICONDUCTOR CORP. and STMICROELECTRONICS, INC., Petitioner, v. NEODRON LTD., Patent Owner. ____________ IPR2021-01128 Patent 8,432,173 B2 Before MIRIAM L. QUINN, PATRICK M. BOUCHER, And CHRISTOPHER L. OGDEN, Administrative Patent Judges. QUINN, Administrative Patent Judge. TERMINATION Due to Settlement After Institution of Trial and Granting Joint Request to Treat Settlement Agreement as Business Confidential Information 35 U.S.C. § 317; 37 C.F.R. § 42.74 IPR2021-01128 Patent 8,432,173 B2 2 I. INTRODUCTION Petitioner and Patent Owner (collectively “the Parties”) have requested that the above-identified inter partes review proceeding be terminated pursuant to a settlement. Upon authorization by the Board on December 23, 2021, the Parties filed a Joint Motion to Terminate the above- captioned proceedings. IPR2021-01128, Paper 8 (“Joint Motion”). The Parties also filed copies of Settlement Agreements (IPR2021-01128, Exs. 2002−2003, “Settlement Agreements”) and filed a Joint Request to Keep Separate (IPR2021-01128, Paper 9, “Joint Request”). II. DISCUSSION Under 35 U.S.C. § 317(a), “[a]n 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.” It is also provided in 35 U.S.C. § 317(a) that if no petitioner remains in the inter partes review, the Office may terminate the review. In the Joint Motion, the Parties represent that they have reached a settlement, jointly seek termination of the joined inter partes review proceeding, a true copy of the settlement agreement was filed as an exhibit, and there are no other collateral agreements between the parties made in connection with, or in contemplation of, the termination. Joint Motion 1-2. The Parties also represent that “the lawsuits between Patent Owner and Petitioners, involving the Patent-in-Suit have been dismissed,” and that the “parties do not contemplate any litigation or proceeding involving the Patent-in-Suit in the foreseeable future.” Joint Motion 3. We instituted a trial on December 13, 2021. Paper 6. We have not IPR2021-01128 Patent 8,432,173 B2 3 yet decided the merits of the proceeding, and a final written decision has not been entered. Notwithstanding that the proceeding has moved beyond the preliminary stage, the Parties have shown adequately that the termination of the joined proceeding is appropriate. Under these circumstances, we determine that good cause exists to terminate the joined proceeding with respect to the Parties. The Parties also requested that the Settlement Agreements be treated as business confidential information and be kept separate from the file of Patent 8,432,173. Joint Request 1-2. After reviewing the Settlement Agreements between the Parties, we find that the Settlement Agreements contain confidential business information regarding the terms of settlement. We determine that good cause exists to treat the Settlement Agreements as business confidential information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). This Order does not constitute a final written decision pursuant to 35 U.S.C. § 318(a). III. ORDER Accordingly, for the reasons discussed above, it is: ORDERED that the Joint Motion is granted, and that IPR2021-01128 is hereby terminated; and FURTHER ORDERED that the Joint Request is granted, and the Settlement Agreements shall be kept separate from the file of Patent 8,432,173, 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). IPR2021-01128 Patent 8,432,173 B2 4 For PETITIONER: David M. Hoffman (Lead Counsel) Tyler R. Bowen IPR13276-0075IP1@fr.com tbowen@perkinscoie.com For PATENT OWNER: Reza Mirzaeie (Lead Counsel) Kristopher Davis C. Jay Chung rmirzaie@raklaw.com rak_neodron@raklaw.com kdavis@raklaw.com