`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SANDISK LLC,
`Petitioner,
`
`v.
`
`MEMORY TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01022
`Patent RE45,542 E
`____________
`
`Before MICHAEL J. FITZPATRICK, STACEY G. WHITE, and
`GARTH D. BAER, Administrative Patent Judges.
`
`FITZPATRICK, Administrative Patent Judge.
`
`ORDER
`Dismissing Petition; Granting Request to Treat Settlement Documents as
`Confidential Business Information
`37 C.F.R. §§ 42.71(a), 42.74(c)
`
`
`Paper 7
`Date: July 11, 2017
`
`
`
`
`
`IPR2017-01022
`Patent RE45,542 E
`
`
`
`
`
`On July 7, 2017, the parties filed a Joint Motion to Terminate Proceeding
`and Joint Request to Keep Papers Separate as Business Confidential Information.
`Paper 6. Because we have not instituted an inter partes review, we treat the Joint
`Motion to Terminate as a joint motion to dismiss the Petition. The Motion requests
`dismissal because the parties have settled all disputes between them regarding the
`patent that was the subject of the Petition, U.S. Patent No. RE45,542 E (“the ’542
`patent”). Paper 6, 2. The parties concurrently filed, as Exhibit 2001, a true copy of
`their Settlement and License Agreement. Id. at 3; Ex. 2001.
`This proceeding is at an early stage. Petitioner filed a Petition for Inter
`Partes Review of certain claims of the ’542 patent on March 3, 2017. Paper 1.
`Patent Owner has not filed a Preliminary Response, and we have neither
`considered the merits of the Petition nor decided whether to institute trial.
`Under these circumstances, we determine it is appropriate to dismiss the
`Petition. See 37 C.F.R. § 42.71(a). We also determine it is appropriate to treat the
`parties’ Settlement and License Agreement (Ex. 2001) as confidential business
`information, and to keep that document separate from the files of the ’370 patent.
`Accordingly, it is hereby:
`ORDERED that the Petition for Inter Partes Review of U.S. Patent No.
`RE45,542 E is dismissed; and
`FURTHER ORDERED that Exhibit 2001 (“Settlement Agreement”) be
`maintained as confidential business information and kept separate from the files of
`U.S. Patent No. RE45,542 E.
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`IPR2017-01022
`Patent RE45,542 E
`
`PETITIONER:
`Eliot Williams
`eliot.williams@bakerbotts.com
`
`Brian Oaks
`brian.oaks@bakerbotts.com
`
`David Wu
`david.wu@bakerbotts.com
`
`Chris Ryan
`chris.ryan@bakerbotts.com
`
`Jason German
`jason.german@bakerbotts.com
`
`PATENT OWNER:
`Timothy Maloney
`tim@fitcheven.com
`
`Nicholas T. Peters
`ntpete@fitcheven.com
`
`Thomas Lebens
`tom@fitcheven.com
`
`Paul Henkelmann
`phenkelmann@fitcheven.com
`
`
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`3
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