throbber
Trials@uspto.gov Paper No. 13, IPR2016-00894
`571.272.7822 Paper No. 12, IPR2016-00897
` Paper No. 13, IPR2016-00900; Paper No. 13, IPR2016-00901
` Paper No. 12, IPR2016-00902; Paper No. 12, IPR2016-00903
` Entered: August 25, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.,
`Petitioner,
`
`v.
`
`
`
`
`
`ADVANCED SILICON TECHNOLOGIES LLC,
`Patent Owner.
`_______________
`
`Case IPR2016-00894 (Patent 8,933,945 B2);
`Case IPR2016-00897 (Patent 6,630,935 B1);
`Case IPR2016-00900 (Patent 6,339,428 B1);
`Case IPR2016-00901 (Patent 6,339,428 B1);
`Case IPR2016-00902 (Patent 6,546,439 B1);
`Case IPR2016-00903 (Patent 6,546,439 B1)1
`_______________
`
`Before KRISTEN L. DROESCH, PATRICK R. SCANLON, and
`BART A. GERSTENBLITH, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`DECISION
`Termination and Settlement
`35 U.S.C. § 317; 37 C.F.R. §§ 42.72, 42.74
`
`1 This Decision addresses issues that apply to the six cases. We, therefore,
`exercise our discretion to issue one Order to be filed in each of the cases.
`The parties are not authorized to use this heading style in their papers.
`
`
`
`

`
`Case IPR2016-00894 (Patent 8,933,945 B2)
`Case IPR2016-00897 (Patent 6,630,935 B1)
`Case IPR2016-00900 (Patent 6,339,428 B1)
`Case IPR2016-00901 (Patent 6,339,428 B1)
`Case IPR2016-00902 (Patent 6,546,439 B1)
`Case IPR2016-00903 (Patent 6,546,439 B1)
`
`
`I.
`
`DISCUSSION
`
`In an e-mail dated August 10, 2016, we authorized the parties to file
`joint motions to terminate the instant proceedings with true copies of their
`agreement(s) in contemplation of termination and joint motions to treat the
`filed copies of their agreement(s) as business confidential information under
`37 C.F.R. § 42.74(c). On August 16, 2016, the parties filed a Joint Motion
`to Terminate Proceeding Pursuant to 35 U.S.C. § 317 (Paper 102), a copy of
`a written Settlement Agreement (Ex. 1016), and a Joint Request that
`Agreement be Treated as Business Confidential Information and Kept
`Separate Under 37 C.F.R. § 42.74(c) (Paper 12) in each of the proceedings.3
`The parties indicate that they have settled their underlying dispute and
`have agreed to terminate these proceedings. Paper 10 at 2–3. The parties
`filed what they represent is a true and accurate copy of their written
`Settlement Agreement, and indicate that there are no other agreements or
`understandings, oral or written, between the parties, including any collateral
`agreements, made in connection with, or in contemplation of, the
`
`
`2 Citations are to IPR2016-00894, unless otherwise indicated.
`3 The parties filed these documents, respectively, in each of the instant
`proceedings as follows:
` IPR2016-00897: Paper 9, Exhibit 1026, and Paper 11;
` IPR2016-00900: Paper 10, Exhibit 1019, and Paper 11;
` IPR2016-00901: Paper 10, Exhibit 1020, and Paper 11;
` IPR2016-00902: Paper 9, Exhibit 1011, and Paper 11; and
` IPR2016-00903: Paper 9, Exhibit 1011, and Paper 11.
`
`
`
`2
`
`

`
`Case IPR2016-00894 (Patent 8,933,945 B2)
`Case IPR2016-00897 (Patent 6,630,935 B1)
`Case IPR2016-00900 (Patent 6,339,428 B1)
`Case IPR2016-00901 (Patent 6,339,428 B1)
`Case IPR2016-00902 (Patent 6,546,439 B1)
`Case IPR2016-00903 (Patent 6,546,439 B1)
`
`termination of these proceedings. Id. at 1. The parties further indicate that
`the Settlement Agreement resolves all underlying disputes between the
`parties with respect to other cases before the U.S. International Trade
`Commission Investigation, and the U.S. District Court for the District of
`Delaware. Id. at 3–5.
`Generally, the Board expects that a proceeding will terminate after the
`filing of a settlement agreement. See, e.g., Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). For the petitions for
`inter partes review before us, trial has not yet been instituted, and the merits
`of the proceedings have not been decided. See 35 U.S.C. § 317(a) (“An 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.”); 37 C.F.R. § 42.72 (“The Board may terminate a
`trial without rendering a final written decision, where appropriate . . . .”).
`We are persuaded that, under these circumstances, termination of these
`proceedings is appropriate.
`This Decision does not constitute a final written decision pursuant to
`35 U.S.C. § 318(a).
`
`
`
`3
`
`

`
`Case IPR2016-00894 (Patent 8,933,945 B2)
`Case IPR2016-00897 (Patent 6,630,935 B1)
`Case IPR2016-00900 (Patent 6,339,428 B1)
`Case IPR2016-00901 (Patent 6,339,428 B1)
`Case IPR2016-00902 (Patent 6,546,439 B1)
`Case IPR2016-00903 (Patent 6,546,439 B1)
`
`
`II. ORDER
`
`Accordingly, it is
`ORDERED the parties’ Joint Motion to Terminate Proceeding
`Pursuant to 35 U.S.C. § 317 (IPR2016-00894, Paper 10; IPR2016-00897,
`Paper 9; IPR2016-00900, Paper 10; IPR2016-00901, Paper 10;
`IPR2016-00902, Paper 9; IPR2016-00903, Paper 9) in each of the instant
`proceedings is granted;
`FURTHER ORDERED that the parties’ Joint Request that Agreement
`be Treated as Business Confidential Information and Kept Separate Under
`37 C.F.R. § 42.74(c) (IPR2016-00894, Paper 12; IPR2016-00897, Paper 11;
`IPR2016-00900, Paper 11; IPR2016-00901, Paper 11; IPR2016-00902,
`Paper 11; IPR2016-00903, Paper 11) in each of the instant proceedings is
`granted;
`FURTHER ORDERED that the Settlement Agreement
`(IPR2016-00894, Exhibit 1016; IPR2016-00897, Exhibit 1026;
`IPR2016-00900, Exhibit 1019; IPR2016-00901, Exhibit 1020;
`IPR2016-00902, Exhibit 1011; IPR2016-00903, Exhibit 1011) in each of the
`instant proceedings shall be kept separate from the file of the
`above-referenced patents, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(c); and
`FURTHER ORDERED that each of these proceedings is terminated.
`
`
`
`4
`
`

`
`Case IPR2016-00894 (Patent 8,933,945 B2)
`Case IPR2016-00897 (Patent 6,630,935 B1)
`Case IPR2016-00900 (Patent 6,339,428 B1)
`Case IPR2016-00901 (Patent 6,339,428 B1)
`Case IPR2016-00902 (Patent 6,546,439 B1)
`Case IPR2016-00903 (Patent 6,546,439 B1)
`
`For PETITIONER:
`
`Michael D. Specht
`Daniel E. Yonan
`Richard Bemben
`Ryan C. Richardson
`Jonathan Tuminaro
`Ross Hicks
`STERN, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`rrichardson-PTAB@skgf.com
`mspecht-PTAB@skgf.com
`rbemben-PTAB@skgf.com
`dyonan-PTAB@skgf.com
`jtuminar-PTAB@skgf.com
`rhicks-PTAB@skgf.com
`
`For PATENT OWNER:
`
`William A. Meunier
`Michael T. Renaud
`Adam S. Rizk
`MINTZ, LEVIN, COHEN, FERRIS, GLOVSKY AND POPEO, P.C.
`wameunier@mintz.com
`mtrenaud@mintz.com
`arizk@mintz.com
`
`
`
`
`
`5

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket