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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`TOSHIBA CORPORATION, TOSHIBA MEMORY CORPORATION,
`TOSHIBA AMERICA ELECTRONIC COMPONENTS, INC.
`Petitioners
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`v.
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`MACRONIX INTERNATIONAL CO., LTD.,
`Patent Owner
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`Case IPR2017-01632
`Patent 8,035,417
`____________
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`JOINT REQUEST TO FILE SETTLEMENT DOCUMENTS AS BUSINESS
`CONFIDENTIAL INFORMATION UNDER 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.72(c)
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`
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`Case: IPR2017-01632
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`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), Petitioner, Toshiba
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`Corporation, Toshiba Memory Corporation, Toshiba America Electronic
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`Components, Inc., and Patent Owner, Macronix International Co., Ltd.
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`(collectively, “the Parties”), jointly request to treat as business confidential
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`information, and to keep separate from the file of the involved patent, the true and
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`complete copy of the Parties’ settlement documentation (Confidential Exhibits
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`2003 and 2004), as referenced in the Joint Motion to Terminate Proceeding
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`pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74, filed concurrently herewith.
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`The entire settlement documentation is confidential and not publicly available.
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`35 U.S.C. § 317(b) provides that:
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`At the request of a party to the proceeding, the agreement or
`understanding shall be treated as business confidential information,
`shall be kept separate from the file of the involved patents, and shall
`be made available only to Federal Government agencies on written
`request, or to any person on a showing of good cause.
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`Likewise, 37 C.F.R. § 42.74(c) provides that:
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`A party to a settlement may request that the settlement be
`treated as business confidential information and be kept separate from
`the files of an involved patent or application. The request must be
`filed with the settlement. If a timely request is filed, the settlement
`shall only be available:
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`1
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`(1) To a Government agency on written request to the Board; or
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`Case: IPR2015-00606
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`(2) To any other person upon written request to the Board to make the
`settlement agreement available, along with the fee specified in § 42.15(d)
`and on a showing of good cause.
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`The present request, which is being filed contemporaneously with the
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`settlement documentation, is timely and in accordance with the foregoing
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`authority. Therefore, the Parties request that their settlement documentation
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`(Confidential Exhibits 2003 and 2004) (i) be treated as business confidential
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`information, (ii) be maintained separate from the publicly available file of the
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`involved patent, and (iii) shall be made available only to Federal Government
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`agencies on written request, or to persons showing good cause on written request,
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`pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
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`Date: October 12, 2018
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`Respectfully submitted,
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`
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`/Christian A. Chu/
`Christian A. Chu, Reg. No. 55,070
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`(202) 626-6420
`Counsel for Patent Owner
`Macronix International Co., Ltd.
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`2
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`Case: IPR2015-00606
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`/Kevin C. Hamilton/
`Kevin C. Hamilton, Reg. No. 67, 593
`DLA Piper LLC (US)
`401 B Street, Suite 1700
`San Diego, CA 92101
`(619) 699-2634
`Counsel for Petitioners
`Toshiba Corporation, Toshiba Memory
`Corporation, and Toshiba America
`Electronic Components, Inc.
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`Date: October 12, 2018
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`3
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`CERTIFICATE OF SERVICE
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`Case: IPR2015-00606
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`Pursuant to 37 CFR § 42.6(e), the undersigned certifies that on October 12,
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`2018, a complete and entire copy of this Joint Request to File Settlement
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`Documents as Business Confidential Information Under 35 U.S.C. § 317(b) and 37
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`C.F.R. § 42.72(c) and its exhibits were provided via email, to the Petitioner by
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`serving the correspondence addresses of record as follows:
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`Kevin C. Hamilton
`DLA Piper LLP (US)
`401 B Street, Suite 1700
`San Diego, CA 92010
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`Steven L. Park
`DLA Piper LLP (US)
`One Atlantic Center
`1201 West Peachtree Street, Suite 2800
`Atlanta, GA 30309-3450
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`Gerald T. Sekimura
`DLA Piper LLP (US)
`555 Mission Street, Suite 2400
`San Francisco, CA 94105
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`Email: kevin.hamilton@dlapiper.com
`Email: steven.park@dlapiper.com
`Email: gerald.sekimura@dlapiper.com
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`4
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`/Edward G. Faeth/
`Edward G. Faeth
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(202) 626-6420
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