AAC Technologies Pte. Ltd. (Shenzhen)v.MemSmart Semiconductor Corp.

Patent Trial and Appeal Board

Jan 4, 2016

12243972 (P.T.A.B. Jan. 4, 2016)

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