TriDiNetworks, Ltd.

Patent Trials and Appeals Board

Jul 26, 2021

IPR2020-01073 (P.T.A.B. Jul. 26, 2021)

Trials@uspto.gov Paper 18
571-272-7822 Date:July 26, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

STMICROELECTRONICS, INC.,
Petitioner,

v.

TRIDINETWORKS LTD.,
Patent Owner.

IPR2020-01073
Patent 8,437,276 B2

Before STACEY G. WHITE, GARTH D. BAER, and
AARON W. MOORE, Administrative Patent Judges.

BAER, Administrative Patent Judge.

TERMINATION
Due to Settlement After Institution of Trial
35 U.S.C. § 317; 37 C.F.R. § 42.74

IPR2020-01073
Patent 8,437,276 B2

2
I. INTRODUCTION
With the Board’s authorization, Petitioner and Patent Owner
(collectively referred to as “the Parties”) filed a Joint Motion to
Terminate the above-identified proceeding due to settlement. Paper 17
(“Joint Motion”). In support of the Joint Motion, the Parties filed a copy of
a Settlement Agreement and Covenant Not to Sue (Ex. 1018 (“Settlement
Agreement”)), as well as a Joint Request to File Settlement Agreement as
Business Confidential Information pursuant to 35 U.S.C. § 317(b) and 37
C.F.R. § 42.74(c) (Paper 16 (“Joint Request”)).
II. DISCUSSION
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 the patent owner, unless the Office has decided
the merits of the proceeding before the request for termination is
filed.” Section 35 U.S.C. § 317(a) also provides that if no petitioner remains
in the inter partes review, the Office may terminate the review.
In the Joint Motion, the Parties represent that they have reached an
agreement that “resolves the original Delaware litigation that gave rise to
this IPR and all other present disputes between the parties.” Joint Motion 2.
The Parties further represent that the filed copy of the Settlement Agreement
is a “true and correct copy,” and “that there are no other agreements, oral or
written, between the parties made in connection with, or in contemplation of,
the termination of the proceeding.” Id. at 4.
We instituted a trial in the above-identified proceeding on December
10, 2020. Paper 7. We have not yet decided the merits of the proceeding,
IPR2020-01073
Patent 8,437,276 B2

3
and a final written decision has not been entered. Notwithstanding that the
proceeding has moved beyond the preliminary stage, the Parties have
adequately shown that termination of the proceeding is appropriate. Under
these circumstances, we determine that good cause exists to terminate the
proceeding with respect to the Parties.
In the Joint Request, the Parties request that the Settlement Agreement
be treated as business confidential information and be kept separate from the
file of the patent involved in this inter partes proceeding. Joint Request 1.
After reviewing the Settlement Agreement between Petitioner and Patent
Owner, we find that the Settlement Agreement contains confidential
business information regarding the terms of settlement. We determine that
good cause exists to treat the Settlement Agreement between Petitioner and
Patent Owner as business confidential information pursuant to
35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
This Order does not constitute a final written decision pursuant to 35
U.S.C. § 318(a).
III. ORDER
Accordingly, for the reasons discussed above, it is:
ORDERED that the Joint Motion to Terminate (Paper 17) is granted,
and IPR2020-01073 is terminated with respect to Petitioner and Patent
Owner pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72; and
FURTHER ORDERED that the Joint Request to File Settlement
Agreement as Business Confidential Information (Paper 16) is granted, and
the Settlement Agreement (Ex. 1018) shall be kept separate from the file of
Patent 8,437,276 B2, and be made available only to Federal Government
IPR2020-01073
Patent 8,437,276 B2

4
agencies on written request, or to any person on a showing of good cause,
pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).

IPR2020-01073
Patent 8,437,276 B2

5
FOR PETITIONER:

Li Chen
Kristoffer Leftwich
CHEN MALIN LLP
lchen@chenmalin.com
kleftwich@chenmalin.com

FOR PATENT OWNER:

Ronald Abramson
Ari J. Jaffess
M. Michael Lewis
Rebecca Rothkopf
LISTON ABRAMSON LLP
ron.abramson@listonabramson.com
ari.jaffess@listonabramson.com
michael.lewis@listonabramson.com
rebecca.rothkopf@listonabramson.com