`Tel: 571.272.7822
`
`
`Paper No. 26
`Entered: October 17, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`TOSHIBA CORPORATION, TOSHIBA MEMORY CORPORATION, and
`TOSHIBA AMERICA ELECTRONIC COMPONENTS, INC.,
`Petitioner,
`v.
`MACRONIX INTERNATIONAL CO., LTD.,
`Patent Owner.
`____________
`
`Case IPR2017-01632
`Patent 8,035,417 B1
`____________
`
`Before KEN B. BARRETT, JENNIFER S. BISK, and JASON M. REPKO,
`Administrative Patent Judges.
`
`REPKO, Administrative Patent Judge.
`
`
`
`
`ORDER
`
`Granting Joint Motion to Terminate
`and
`Granting Request to Treat Settlement Documents
`as Confidential Business Information
`37 C.F.R §§ 42.72, 42.74(c)
`
`
`
`IPR2017-01632
`Patent 8,035,417 B1
`
`
`Macronix International Co., Ltd. (“Patent Owner”) and Toshiba
`Corporation, Toshiba Memory Corporation, and Toshiba America Electronic
`Components, Inc. (collectively, “Petitioner”), jointly move to terminate this
`inter partes review in light of their settlement that resolves their dispute
`regarding U.S. Patent 8,035,417 B1. Paper 24 (“Mot.”). The parties also
`filed a true copy of their written settlement agreement with the motion as
`required by 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b). Exs. 2003, 2004
`(“Settlement Agreement”). Under 37 C.F.R. § 42.74(c), the parties also filed
`a joint request to treat the settlement agreement as business confidential
`information kept separate from the file of the involved patent. Paper 25.
`For the reasons below, the motions are granted.
`The Board generally expects that a case “will terminate after the filing
`of a settlement agreement, unless the Board has already decided the merits.”
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14,
`2012). In this proceeding, we have not entered a final written decision. The
`parties submit that termination is appropriate because they have settled their
`dispute. Mot. 1. Under these circumstances, we determine that it is
`appropriate to terminate this proceeding.
`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 it
`is appropriate to treat the Settlement Agreement between Petitioner and
`Patent Owner as business confidential information under 37 C.F.R.
`§ 42.74(c).
`
`
`2
`
`
`
`IPR2017-01632
`Patent 8,035,417 B1
`
`
`ORDER
`
`Accordingly, it is:
`ORDERED that the Joint Motion to Terminate is granted;
`FURTHER ORDERED that the inter partes review is terminated as to
`all parties; and
`FURTHER ORDERED that request that the Settlement Agreement
`(Exhibits 2003, 2004) be treated as business confidential information and be
`kept separate under 37 C.F.R. § 42.74(c) and 35 U.S.C. § 317(b) is granted.
`
`
`3
`
`
`
`IPR2017-01632
`Patent 8,035,417 B1
`
`PETITIONER:
`Kevin C. Hamilton
`Steven L. Park
`Gerald T. Sekimura
`DLA PIPER LLP (US)
`kevin.hamilton@dlapiper.com
`steven.park@dlapiper.com
`gerald.sekimura@dlapiper.com
`
`PATENT OWNER:
`Christian A. Chu
`Ayan Roy-Chowdhury
`Kevin Su
`Timothy W. Riffe
`Ryan Chowdhury
`Michael J. McKeon
`FISH & RICHARDSON P.C.
`chu@fr.com
`roy-chowdhury@fr.com
`su@fr.com
`riffe@fr.com
`rchowdhury@fr.com
`mckeon@fr.com
`
`
`4
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
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.
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.
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
