Invensas Corporation

Patent Trials and Appeals Board

Nov 12, 2020

IPR2020-01732 (P.T.A.B. Nov. 12, 2020)

Trials@uspto.gov
571-272-7822
Paper 10
Entered: November 12, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC d/b/a
ON SEMICONDUCTOR,
Petitioner,

v.

TESSERA ADVANCED TECHNOLOGIES, INC.,
Patent Owner.
____________
____________

IPR2020-01732
Patent 6,317,333 B1
____________

Before MICHAEL R. ZECHER, TREVOR M. JEFFERSON, and
BARBARA A. PARVIS, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

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

IPR2020-01732
Patent 6,317,333 B1

2

I. DISCUSSION
On November 9, 2020, the parties filed the following documents: (1) a Joint
Motion to Terminate Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.72 (Paper 7,
“Mot.”); (2) a true copy of the parties’ settlement agreement (Ex. 1025); and (3) a
Joint Request to File Settlement Agreement as Business Confidential Information
and to Maintain Agreement Separate From the Public File Pursuant to 35 U.S.C.
§ 317(b) and 37 C.F.R. § 42.74(c) (Paper 8). For the following reasons, we grant
both the parties’ Joint Motion to Terminate and their request to treat the settlement
agreement as business confidential information.
This proceeding is still in its preliminary stage. Petitioner, Semiconductor
Components Industries, LLC d/b/a ON Semiconductor (“ON”), filed a Petition
requesting an inter partes review of claims 1 and 2 of U.S. Patent No. 6,317,333
B1 (Ex. 1001, “the ’333 patent”) (Paper 1), along with a Motion for Joinder to
IPR2020-00708 (Paper 3). Since ON filed the Petition, Patent Owner, Tessera
Advanced Technologies, Inc. (“Tessera”), has not filed a Preliminary Response,
Tessera has not filed an Opposition to the Motion for Joinder, and we have not
entered a decision whether to institute an inter partes review nor have we entered a
decision addressing the Motion for Joinder.
In the Joint Motion to Terminate, the parties indicate that they “have
resolved their dispute with respect to the ’333 patent, and [they] have agreed to
terminate this [proceeding].” Mot. 2. The parties represent that Exhibit 1025 is “a
true and complete copy” of an “Agreement and Covenant Not to Sue,” and that
“there are no other agreements or understandings, oral or written, between
[Tessera] and [ON], including any collateral agreements, made in connection with,
or in contemplation of, the termination of [this] proceeding.” Id. at 1.
IPR2020-01732
Patent 6,317,333 B1

3

The parties further represent that the ’333 patent is involved in the following
two matters: (1) Invensas Corp. and Tessera Advanced Techs., Inc. v. NVIDIA
Corp., No. 19-cv-861-RGA (D. Del.) (“district court case”); and (2) IPR2020-
00708 currently pending before the Board. Mot. 2. According to the parties, the
district court case has been dismissed with prejudice and the parties in IPR2020-
00708 have filed a Joint Motion to Terminate. Id. at 2–3 (citing NVIDIA Corp. v.
Tessera Advanced Techs., Inc., IPR2020-00708, Paper 13 (PTAB Oct. 23, 2020)
(Joint Motion to Terminate)). We will be entering a decision granting the Joint
Motion to Terminate filed in IPR2020-00708 concurrently.
Under these particular circumstances, we determine that it is appropriate to
dismiss the Petition without rendering any further decisions, thereby terminating
this proceeding. See 37 C.F.R. § 42.71(a). We also have reviewed the true copy of
the parties’ settlement agreement, and we determine that good cause exists to treat
this settlement agreement as business confidential information, and keep it separate
from the file of the ’333 patent, pursuant to 37 C.F.R. § 42.74(c).

II. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the parties’ request to treat the true copy of their settlement
agreement filed in this proceeding (Ex. 1025) as business confidential information,
and keep it separate from the file of the ’333 patent, pursuant to 37 C.F.R.
§ 42.74(c) is granted; and
FURTHER ORDERED that the parties’ Joint Motion to Terminate is
granted, and the Petition is dismissed resulting in termination of this proceeding.
IPR2020-01732
Patent 6,317,333 B1

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For PETITIONER:
Roger Fulghum
Brett Thompsen
Nick Schuneman
Baker Botts LLP
roger.fulghum@bakerbotts.com
brett.thompsen@bakerbotts.com
nick.schuneman@bakerbotts.com

For PATENT OWNER:

Peter P. Chen
David A. Garr
Covington & Burling LLP
pchen@cov.com
dgarr@cov.com