Vantage Micro, LLC

Patent Trials and Appeals Board

Nov 24, 2020

IPR2020-00830 (P.T.A.B. Nov. 24, 2020)

Trials@uspto.gov Paper No. 10
571-272-7822 Date: No November 24, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

TEXAS INSTRUMENTS INCORPORATED,
Petitioner,

v.

VANTAGE MICRO LLC,
Patent Owner.
___________

IPR2020-00830
Patent 7,414,606 B1
___________

Before JONI Y. CHANG, BRYAN F. MOORE, and JASON M. REPKO,
Administrative Patent Judges.

MOORE, Administrative Patent Judge.

TERMINATION
Settlement Prior to Institution of Trial
37 C.F.R. § 42.74

IPR2020-00830
Patent 7,414,606 B1

2

On November 18, 2020, the parties filed a Joint Motion to Terminate (Paper
8, “Joint Motion”), settlement agreement (Ex. 1024, “Agreement”), and a Joint
Request to Keep the Agreement Separate Pursuant to 35 U.S.C. § 317 and 37
C.F.R. § 42.74 (Paper 9, “Joint Request”).
In the Joint Motion, the parties state that they have agreed to terminate this
inter partes review, pursuant to the Agreement. Joint Motion 1. The parties
further state that in the related district court case between the parties, Vantage
Micro LLC v. Texas Instruments Inc., 4:19-cv-00733 (E.D. Tex.), the “Parties
executed a Settlement and License Agreement terminating [this] underlying
litigation.” Id. at 2. The Parties also assert “[t]here are no other agreements made
in connection with, or in contemplation of, the termination.” Id. at 1.
This case is in its preliminary stage and we have not yet decided whether to
institute an inter partes review. Accordingly, we have not “decided the merits of
the proceeding[s]” prior to the parties’ request for termination. 35 U.S.C. § 317(a).
The foregoing factors weigh in favor of granting the Joint Motion. We discern no
factors weighing against termination of the proceeding. Accordingly, we grant the
Joint Motion.
Similarly, we determine that, under the circumstances, it is appropriate to
treat the Agreement as business confidential information kept separate from the file
of the challenged patent. We, therefore, also grant the Joint Request.
This Order does not constitute a final written decision pursuant to 35 U.S.C.
§ 318(a).

IPR2020-00830
Patent 7,414,606 B1

3

ORDER
For the foregoing reasons, it is
ORDERED that the Joint Motion to Terminate is GRANTED, and this
proceeding is hereby terminated; and
FURTHER ORDERED that the parties’ Joint Request to Keep Separate is
GRANTED, and the Agreement (Ex. 1024) shall be treated as business
confidential information and kept separate from the file of U.S. Patent No.
7,414,606 B1.

IPR2020-00830
Patent 7,414,606 B1

4

For PETITIONER:

Joshua A. Griswold
Thomas H. Reger, II
Patrick J. Bisenius
FISH & RICHARDSON P.C.
griswold@fr.com
reger@fr.com
bisenius@fr.com

For PATENT OWNER:

Timothy Devlin
Alex Chan
DEVLIN LAW FIRM LLC
td-patb@devlinlawfirm.com
achan@devlinlawfirm.com