Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 15
`Date Entered: August 24, 2016
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZTE USA, Inc.,
`Petitioner,
`
`v.
`
`PARTHENON UNIFIED MEMORY ARCHITECTURE LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00665
`Patent 5,960,464
`____________
`
`
`
`Before MICHAEL R. ZECHER, JAMES B. ARPIN, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`
`
`DECISION
`Termination of the Proceeding and Dismissal of Joinder Motion
`37 C.F.R. §§ 42.72, 42.74, and 42.122(b)
`
`
`
`
`
`
`

`
`IPR2016-00665
`Patent 5,960,464
`
`I. DISCUSSION
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`On August 19, 2016, the parties filed a Joint Motion to Terminate this
`
`proceeding (Paper 12), a true copy of the parties’ settlement agreement (Ex. 2001),
`
`and a request to treat the settlement agreement as business confidential information
`
`under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (Paper 13).
`
`This proceeding is still in its preliminary stages. On February 26, 2016,
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`Petitioner, ZTE USA, Incorporated (“ZTE”), filed a Petition requesting an inter
`
`partes review of claims 1–4, 7–13, 16–24, 32–36, and 40 of U.S. Patent No.
`
`5,960,464 (Ex. 1001, “the ’464 patent”). Paper 2. ZTE filed its Petition along with
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`an initial Motion for Joinder requesting that we join ZTE as a party with Samsung
`
`Elecs. Co. v. Parthenon Unified Memory Architecture LLC, Case IPR2015-01946
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`(“Samsung IPR”). Paper 3. As we explained in an Order dated June 8, 2016, we
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`instituted an inter partes review in the Samsung IPR on March 30, 2016, and we
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`granted a Joint Motion to Terminate the Samsung IPR on May 25, 2016. Paper 10,
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`3. As a consequence, we dismissed without prejudice ZTE’s initial Motion for
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`Joinder and authorized ZTE to file a renewed Motion for Joinder that seeks joinder
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`with a Petition filed by Apple Incorporated (“Apple”) requesting an inter partes
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`review of claims 1–4, 7–13, 16–24, 32–36, and 40 of the ’464 patent (Case
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`IPR2016-00924, “Apple IPR”). On June 15, 2016, ZTE filed a Renewed Motion
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`for Joinder requesting that we join ZTE as a party with the Apple IPR. Paper 11.
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`Patent Owner, Parthenon Unified Memory Architecture, Limited Liability
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`Company, waived its right to file a Preliminary Response in this proceeding. Paper
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`9. We have not entered a decision whether or not to institute an inter partes
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`review.
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`In the Joint Motion to Terminate this proceeding, the parties represent that
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`they have settled all of their disputes regarding the ’464 patent. Paper 12, 2. The
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`parties further represent that the ’464 patent was asserted against multiple
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`
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`2
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`

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`IPR2016-00665
`Patent 5,960,464
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`companies in the United States District Court for the Eastern District of Texas. Id.
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`In addition to this proceeding, the parties represent that they are involved in the
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`following proceedings before the Board: (1) Case IPR2016-00664; (2) Case
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`IPR2016-00666; (3) Case IPR2016-0667; and (4) Case IPR2016-00670. Id. at 3.
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`According to the parties, they are in the process of filing a Joint Motion to
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`Terminate in each of these proceedings. Id. Lastly, the parties represent that the
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`’464 patent remains at issue in the following proceedings before the Board:
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`(1) Case IPR2016-00848; (2) Case IPR2016-00924; and (3) Case IPR2016-01121.
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`Id. Under these particular circumstances, we determine that it is appropriate to
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`terminate this proceeding without rendering any further decisions. See 37 C.F.R.
`
`§ 42.72.
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`In consideration of the foregoing, it is hereby:
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`II. ORDER
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`ORDERED that the parties’ request to treat the settlement agreement
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`(Ex. 2001) as business confidential information under 35 U.S.C. § 317(b) and 3
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`7 C.F.R. § 42.74(c) is GRANTED;
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`FURTHER ORDERED that the Joint Motion to Terminate this proceeding is
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`GRANTED, and this proceeding is hereby terminated; and
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`FURTHER ORDERED that, because this proceeding has been terminated,
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`ZTE’s Renewed Motion for Joinder is dismissed as moot.
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`3
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`

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`IPR2016-00665
`Patent 5,960,464
`
`For PETITIONER:
`
`Lionel M. Lavenue
`Shaobin Zhu
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`lionel.lavenue@finnegan.com
`shaobin.zhu@finnegan.com
`
`
`
`For PATENT OWNER:
`
`Masood Anjom
`Amir Alavi
`Scott Clark
`Ahmad, Zavitsanos, Anaipakos, Alavi & Mensing P.C.
`manjom@azalaw.com
`aalavi@azalaw.com
`sclark@azalaw.com
`
`4