UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`DIODES INCORPORATED
`Petitioner
`
`v.
`
`NORTH PLATE SEMICONDUCTOR, LLC
`Patent Owner.
`
`
`
`Case No. IPR2018-01196
`U.S. Patent No. 7,564,097
`
`
`
`
`
`
`JOINT MOTION TO TERMINATE
`UNDER 35 U.S.C. § 317(a) AND 37 C.F.R. §§ 42.72 AND 42.74
`
`AND
`
`JOINT REQUEST TO KEEP PAPERS SEPARATE AS
`BUSINESS CONFIDENTIAL INFORMATION
`UNDER 35 U.S.C. § 317(b) AND 37 C.F.R. § 42.74(c)
`
`
`
`-1-
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`DIODES INCORPORATED
`Petitioner
`
`v.
`
`NORTH PLATE SEMICONDUCTOR, LLC
`Patent Owner.
`
`
`
`Case No. IPR2018-01196
`U.S. Patent No. 7,564,097
`
`
`
`
`
`
`JOINT MOTION TO TERMINATE
`UNDER 35 U.S.C. § 317(a) AND 37 C.F.R. §§ 42.72 AND 42.74
`
`AND
`
`JOINT REQUEST TO KEEP PAPERS SEPARATE AS
`BUSINESS CONFIDENTIAL INFORMATION
`UNDER 35 U.S.C. § 317(b) AND 37 C.F.R. § 42.74(c)
`
`
`
`-1-
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Pursuant to 35 U.S.C. § 317(a), 37 C.F.R. §§ 42.72 and 42.74, and the Board’s
`
`authorization of August 16, 2018, Petitioner Diodes Incorporated (“Petitioner”) and
`
`Patent Owner North Plate Semiconductor, LLC (“Patent Owner”) jointly request
`
`termination of the Inter Partes Review of U.S. Patent No. 7,564,097 in IPR2018-
`
`01196.
`
`The Parties have settled all of their disputes involving U.S. Patent No.
`
`7,564,097. More specifically, the Parties have settled and dismissed their related
`
`district court litigation (North Plate Semiconductor, LLC v. Diodes Incorporated,
`
`Case No. 4:17-cv-00816 (E.D. Tex.)).
`
`Pursuant to 37 C.F.R. § 42.74(b), the Parties’ settlement agreement made in
`
`contemplation of termination of the proceeding is in writing, and a true and correct
`
`copy of such agreement is being filed herewith as Exhibit 2007. No other such
`
`agreements, written or oral, exist between the Parties.
`
`The Parties hereby jointly request that the settlement agreement be treated as
`
`business confidential information and be kept separate from the files of the above-
`
`captioned IPR, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`
`I.
`
`
`
`Background
`
`On June 5, 2018, Petitioner filed a request for Inter Partes Review of claims
`
`1-5 of U.S. Patent No. 7,564,097 (“the ‘097 Patent”). See IPR2018-01196, Paper 1.
`
`
`
`
`
`
`-2-
`
`
`
`
`
`
`
`On July 23, 2018, the Parties agreed to settle all of their disputes involving the ‘097
`
`Patent. On August 14, 2018, the Parties informed the Board of the settlement and
`
`requested authorization to file a joint motion to terminate this proceeding with
`
`respect to both the Patent Owner and Petitioner. On August 16, 2018, the Board
`
`authorized the filing of the requested motion to terminate this proceeding as to both
`
`Parties. The Board additionally authorized the Parties to include with the joint
`
`motion to terminate a request to treat the settlement as business confidential
`
`information.
`
`
`
`The ‘097 Patent is not currently the subject of any additional pending Inter
`
`Partes Review or district court proceedings.
`
`II. Legal Standard
`
`
`
`An inter partes review proceeding “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.” 35 U.S.C. § 317(a). A joint motion to terminate generally “must (1) include
`
`a brief explanation as to why termination is appropriate; (2) identify all parties in
`
`any related litigation involving the patents at issue; (3) identify any related
`
`proceedings currently before the Office, and (4) discuss specifically the current
`
`status of each such related litigation or proceeding with respect to each party to the
`
`
`
`
`
`
`-3-
`
`
`
`
`
`
`
`litigation or proceeding.” Heartland Tanning, Inc. v. Sunless, Inc., IPR2014-00018,
`
`Paper No. 26, at *2 (P.T.A.B. July 28, 2014).
`
`III. Termination Is Appropriate
`
`
`
`Termination of this IPR is appropriate under 37 C.F.R. § 42.71(a) as (1)
`
`Petitioner and Patent Owner have settled their dispute regarding the '097 patent and
`
`have agreed to terminate the IPR; and (2) the Board has not yet “decided the merits
`
`of the proceeding.” See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48756,
`
`48768 (Aug. 14, 2012). Importantly, the Board has yet to make a determination with
`
`respect to institution of the Petition.
`
`No dispute remains between the Patent Owner and Petitioner involving the
`
`‘097 Patent. The Parties have agreed to jointly request termination of this Inter
`
`Partes Review, IPR2018-01196. The related litigation between the Parties involving
`
`the ‘097 Patent has been dismissed.
`
`IV. Status of Related Litigation
`
`
`
`As noted above, the related district court action between Patent Owner and
`
`Petitioner has been settled and dismissed. Patent Owner certifies that there are no
`
`other related district court actions or Inter Partes Review proceedings involving the
`
`’097 Patent, either currently pending or previously dismissed.
`
`V. Request To Treat Settlement Agreement As Business Confidential
`
`
`
`
`
`
`-4-
`
`
`
`
`
`
`
`
`
`Patent Owner and Petitioner hereby request that the settlement agreement
`
`(including all attachments and schedules) filed herewith as Ex. 2007 be treated as
`
`business confidential information, be kept separate from the file of the above-
`
`captioned IPR, and be made available only to Federal Government agencies on
`
`written request, or to any person on a showing of good cause pursuant to 35 U.S.C.
`
`§ 317(b) and 37 C.F.R. § 42.74(c). In view of that request, the settlement agreement
`
`(Ex. 2007) has been filed for access by the “Parties and Board Only.” The Parties
`
`have complied with the requirements of 37 C.F.R. § 42.74.
`
`
`
`
`
`
`
`
`
`
`-5-
`
`
`
`
`
`
`
`VI. Conclusion
`
`
`
`For the foregoing reasons, the Patent Owner and Petitioner jointly request that
`
`the Board terminate this Inter Partes Review proceeding, and treat the settlement
`
`agreement filed herewith as business confidential information and keep the
`
`agreement separate from the file of the above-captioned IPR.
`
`
`
`
`
`Dated: August 21, 2018
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Dated: August 21, 2018
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/Zachary D. Silbersher/
`Zachary D. Silbersher
`Reg. No. 62,090
`
`Lead Counsel for Patent Owner
`
`/Darren M. Franklin/
`Darren M. Franklin
`Reg. 51,701
`
`Lead Counsel for Petitioner
`
`
`
`
`
`
`
`
`
`
`
`
`
`-6-
`
`
`
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6, the undersigned hereby certifies that a
`
`copy of this JOINT MOTION TO TERMINATE UNDER 35 U.S.C. §
`
`317(a) AND 37 C.F.R. §§ 42.72 AND 42.74 AND JOINT REQUEST TO
`
`KEEP PAPERS SEPARATE AS BUSINESS CONFIDENTIAL
`
`INFORMATION UNDER 35 U.S.C. § 317(b) AND 37 C.F.R. § 42.74(c)
`
`has been served electronically upon the following email addresses provided
`
`in the Petition at page 4:
`
`Darren M. Franklin (dfranklin@sheppardmullin.com)
`Scott R. Miller (smiller@sheppardmullin.com)
`Sheppard, Mullin, Richter & Hampton LLP
`333 South Hope Street, 43rd Floor
`Los Angeles, California 90071-1422
`
`
`Dated: August 21, 2018
`
`
`
`
`
`
`
`
`
`
`
`/Zachary D. Silbersher/
`Zachary D. Silbersher
`Reg. No. 62,090
`
`-7-
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER’S UPDATED EXHIBIT LIST
`
`Exhibit Description
`2001
`U.S. Patent No. 6,433,396 (“Kinzer”)
`2002
`Reserved
`2003
`“Graphic Symbols for Electrical and Electronics Diagrams (Including
`Reference Designation Letters,” IEEE Standard, American Nat’l
`Standard, Canadian Standard, IEEE Std 315-1975 (Reaffirmed 1993)
`(selected pages)
`B. Jayant Baliga, “Fundamentals of Power Semiconductor Devices”
`(2008, Springer) (selected section)
`R.K. Williams et al., “A 30V P-Channel Trench Gated DMOSFET with
`900 mW cm2 Specific On-Resistance at 2.7 V”, IEEE International
`Symposium on Power Semiconductor Devices and ICs, pp. 53-56, 1996
`B. Jayant Baliga, “Advanced Power MOSFET Concepts” (2010, Springer)
`(selected section)
`Confidential Settlement Agreement – FILED UNDER SEAL
`
`2004
`
`2005
`
`2006
`
`2007
`
`-8-
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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
