Innovative Foundry Technologies LLC

Patent Trials and Appeals Board

May 11, 2021

IPR2020-00786 (P.T.A.B. May. 11, 2021)

Trials@uspto.gov Paper No. 25
Tel: 571-272-7822 Entered: May 11, 2021
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SMIC, AMERICAS,
Petitioner,

v.

INNOVATIVE FOUNDRY TECHNOLOGIES, LLC,
Patent Owner.
____________

IPR2020-00786
Patent No. 7,009,226 B1

IPR2020-01003
Patent No. 6,580,122 B1
____________

Before JON B. TORNQUIST, CHRISTOPHER M. KAISER,
JULIA HEANEY, and SCOTT E. BAIN, Administrative Patent Judges.

BAIN, Administrative Patent Judge.
TERMINATION
Due to Settlement After Institution of Trial
35 U.S.C. § 317; 37 C.F.R. § 42.74
IPR2020-00786 (Patent 7,009,226 B1)
IPR2020-01003 (Patent 6,580,122 B1)

2
On April 27, 2021, pursuant to our authorization, the parties filed
Joint Motions to Terminate proceedings in the above-captioned cases. Paper
23 (“Motion”)1; IPR2020-01003, Paper 18. Accompanying the motions, the
parties filed copies of a settlement and license agreement (“Settlement
Agreement”), along with a Joint Request To File Settlement Agreement As
Business Confidential Information, to be kept separate from the files of the
involved patent and inter partes review pursuant to 35 U.S.C. § 317(b) and
37 C.F.R. § 42.74. Ex. 1037; Paper 24.
The parties state that the Settlement Agreement “resolves all
underlying disputes” between Petitioner and Patent Owner regarding the
patents in the above-captioned cases. Paper 24, 1. The parties further state
that termination is justified “[i]n view of the dismissal, with prejudice, of the
subject patent[s] from the litigation between the Parties, the absence of any
other pending litigation involving [the] patent[s], or any public interest or
other factors militating against termination.” Paper 23, 3. Finally, the
parties state that they are unaware of any other pending proceedings relating
to the subject patents before the Board, or any other matter before the
USPTO that would be affected by the requested termination of these
proceedings. Id. at 4, 7.
We granted institution of inter partes review in these proceedings, but
have not yet made a determination on the merits. Under the present
circumstances, we determine that it is appropriate to terminate the
proceedings. See 37 C.F.R. §§ 42.5(a), 42.71(a). This paper does not
constitute a final written decision pursuant to 35 U.S.C. § 318(a).

1 Our Decision refers to the paper numbers associated with IPR2020-00786.
The filings in IPR2020-01003 are essentially identical.
IPR2020-00786 (Patent 7,009,226 B1)
IPR2020-01003 (Patent 6,580,122 B1)

3
As requested by the parties, the Settlement Agreement will be treated
as business confidential information and kept separate from the patent files.
37 C.F.R. § 42.74(c).
Accordingly, it is
ORDERED that the Joint Motions to Terminate IPR2020-00786 and
IPR2020-01003 are granted;
FURTHER ORDERED that the parties’ Joint Requests to have their
Settlement Agreement treated as business confidential information, to be
kept separate from the patent files, are granted; and
FURTHER ORDERED that the proceedings in IPR2020-00786 and
IPR2020-01003 are terminated.

For PETITIONER:

Alex Chachkes
Yufeng Ma
ORRICK, HERRINGTON, & SUTCLIFFE L.L.P.
a34ptabdocket@orrick.com
ptabdockete81@orrick.com

For PATENT OWNER:

William Meunier
Michael Renaud
Adam Rizk
MINTZ, LEVIN, COHN, FERRIS, GLOVSKY AND POPEO, P.C.
wameunier@mintz.com
mtrenaud@mintz.com
arizk@mintz.com