StreamScale, Inc.

Patent Trials and Appeals Board

Mar 17, 2022

IPR2021-01408 (P.T.A.B. Mar. 17, 2022)

Trial@uspto.gov 571-272-7822 Paper No. 10 Date Entered: March 17, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ INTEL CORPORATION, Petitioner, v. STREAMSCALE, INC., Patent Owner. ____________ IPR2021-01330 IPR2021-01408 Patent 8,623,296 B21 ____________ Before BRIAN J. McNAMARA, CHRISTOPHER L. OGDEN, and IFTIKHAR AHMED, Administrative Patent Judges. McNAMARA, Administrative Patent Judge. DECISION Settlement Prior to Institution of Trial 37 C.F.R. § 42.74 1 This order is to be filed in each case. The parties are not authorized to use this style heading in any subsequent papers. IPR2021-01330, -01408 Patent 8,623,296 B2 2 The parties have requested that IPR2021-01330 and IPR2021-01408 (the “Subject Proceedings”) be terminated pursuant to an agreement. On March 4, 2022, by e-mail, the Board authorized the parties to file a Joint Motion to Terminate and a Joint Request that their Agreement Be Treated As Business Confidential Information under 37 C.F.R. 42.74(c). On March 8, 2022 the parties filed a Joint Motion to Terminate. Paper 8 in each proceeding. The parties also filed a copy of a written Standstill Agreement (Ex. 2001 in each proceeding), a Letter Agreement (Ex. 2002 in each proceeding) and a Joint Request That the Agreements Be Treated As Business Confidential Information and Kept Separate (Paper 9 in each proceeding). See 35 U.S.C. § 317(a); 37 C.F.R. §§ 42.72, 42.74(c). A decision by the Board to institute a trial has not yet been entered. The parties have not identified any other related matters and have certified that there are no collateral agreements or understandings made in connection with, or in contemplation of, the termination of the Subject Proceedings. Paper 8, 1. Under these circumstances, the Board determines that it is appropriate to terminate the proceedings. 37 C.F.R. § 42.72. It is, therefore, ORDERED that the Joint Motion to Terminate the Subject Proceedings is GRANTED and the proceeding is hereby terminated; FURTHER ORDERED that the parties’ Joint Request That the Standstill Agreement and The Letter Agreement Be Treated As Business Confidential Information Which Shall Be Kept Separate from the file of the involved patents under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is GRANTED. IPR2021-01330, -01408 Patent 8,623,296 B2 3 PETITIONER: (via electronic transmission) David L. Cavanaugh Thomas E. Anderson Brian J. Lambson WILMER CUTLER PICKERING HALE AND DOOR LLP david.cavanaugh@wilmerhale.com tom.anderson@wilmerhale.com brian.lambson@wilmerhale.com PATENT OWNER: (via electronic transmission) Hong Zhong IRELL & MANELLA LLP hzhong@irell.com