AAC Technologies Pte. Ltd. (Shenzhen)v.MemSmart Semiconductor Corp.Download PDFPatent Trial and Appeal BoardJan 4, 201612243972 (P.T.A.B. Jan. 4, 2016) Copy Citation Trials@uspto.gov Paper 28 Tel: 571-272-7822 Entered: January 4, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD AAC TECHNOLOGIES PTE. LTD., Petitioner, v. MEMSMART SEMICONDUCTOR CORPORATION, Patent Owner. Case IPR2014-01246 Patent 7,829,364 B2 Before JENNIFER S. BISK, BRIAN P. MURPHY, and MICHELLE N. ANKENBRAND, Administrative Patent Judges. BISK, Administrative Patent Judge. DECISION Joint Motion to Terminate 35 U.S.C. 317(a) Case IPR2014-01246 Patent 7,829,364 B2 2 On December 29, 2015, Petitioner, AAC Technologies, and Patent Owner, MemSmart Semiconductor Corporation, filed a joint motion to terminate this proceeding under 35 U.S.C. § 317(a) (Paper 25, “Mot.”) and to keep the simultaneously filed settlement agreement, Exhibit 1018 (designated as “Parties and Board Only”), as business confidential information under 37 C.F.R. § 317(b) and 37 C.F.R. § 42.74(c) (Paper 26). 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 patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” In their joint motion, the parties request termination of the instant proceeding because they have settled their disputes with regard to U.S. Patent No. 7,829,364 (“the ’364 patent”). Mot. 2. Generally, the Board expects that a proceeding will terminate after the filing of a settlement agreement, if the settlement agreement includes all parties to the proceeding. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). The parties filed such a settlement agreement. Ex. 1018. The joint motion represents that the settlement resolves the disputes between the parties, with respect to the ’364 patent, in the related district court action as well. Mot. 1. Although an Institution Decision was entered in February, 2015 (Paper 8), the parties notified the panel of their settlement prior to oral hearing and before the panel decided the merits of the proceeding. Under these circumstances, we determine that it is appropriate to enter judgment and terminate the proceeding without rendering a final written decision. 37 C.F.R. § 42.72. Case IPR2014-01246 Patent 7,829,364 B2 3 ORDER It is ORDERED that the joint motion to terminate this proceeding is granted; and FURTHER ORDERED that the joint request that the settlement agreement (Ex. 1018) be treated as business confidential information and be kept separate from the file of the involved patent under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is granted. PETITIONER: Weiguo Chen will.chen@finnegan.com Joshua L. Goldberg joshua.goldberg@finnegan.com PATENT OWNER: Winston O. Huff whuff@huffip.com Lewis E. Hundell, III lewis@hundelllaw.com Copy with citationCopy as parenthetical citation