`571-272-7822
`
`
` Paper 8
`
`Entered: September 7, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`SILICON MITUS, INC. and SILICON MITUS TECHNOLOGY, INC.,
`Petitioner,
`
`v.
`
`MAXIM INTEGRATED PRODUCTS, INC.,
`Patent Owner.
`
`
`
`
`Case IPR2018-01290 (Patent 8,643,331 B1)
`Case IPR2018-01292 (Patent 8,203,305 B1)1
`
`
`
`Before MIRIAM L. QUINN, JESSICA C. KAISER, and
`SHARON FENICK, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`
`TERMINATION
`Dismissing the Proceedings
`37 C.F.R. § 42.5(a); 37 C.F.R. § 42.71(a)
`
`
`
`
`
`1 This Order will be entered in each case. The parties are not authorized to
`use this caption style.
`
`
`
`IPR2018-01290 (Patent 8,643,331 B1)
`IPR2018-01292 (Patent 8,203,305 B1)
`
`Pursuant to the parties’ joint request, the Board authorized the parties
`
`to file joint motions to terminate the above-captioned proceedings. On
`September 4, 2018, Petitioner filed, on behalf of the parties, a “Joint Motion
`to Terminate Proceeding” (Paper 7)2 and a “Joint Request to File Settlement
`Agreement as Business Confidential Information” (Paper 6), along with a
`copy of the settlement agreement (Ex. 1015) and a copy of the district court
`dismissal order (Ex. 1016).
`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. 48756, 48768 (Aug. 14, 2012). These cases are in the
`preliminary proceeding stage, which begins with the filing of a petition for
`instituting a trial and ends with a written decision as to whether trial will be
`instituted. See 37 C.F.R. § 42.2. Petitioner filed a Petition in each
`proceeding on June 20, 2018. Paper 1. Patent Owner has not yet filed a
`Preliminary Response, and no decision whether to institute a trial has been
`rendered in either proceeding.
`The parties represent that Exhibit 1015 is a true and correct copy of
`the settlement agreement between the parties. Paper 7, 2. The parties also
`represent that the pending district court litigation between the parties has
`been settled and dismissed in an order dated August 22, 2018 (Ex. 1016).
`Paper 7, 3–4.
`Based on the facts of the case, and in view of the parties’ joint motion,
`we determine that it is appropriate to dismiss the Petition in each proceeding
`as to both Petitioner and Patent Owner without rendering either a decision to
`
`
`2 We refer to the paper and exhibit numbers in IPR2018-01290. The parties
`filed similar papers and exhibits in IPR2018-01292.
`
`
`
`2
`
`
`
`IPR2018-01290 (Patent 8,643,331 B1)
`IPR2018-01292 (Patent 8,203,305 B1)
`
`institute or a final written decision. See 37 C.F.R. §§ 42.5(a), 42.71(a).
`Therefore, the Joint Motion to Terminate Proceeding and Joint Request to
`File Settlement Agreement as Business Confidential Information are
`granted. This paper does not constitute a final written decision pursuant to
`35 U.S.C. § 318(a).
`Accordingly, it is
`ORDERED that the Joint Request to File Settlement Agreement as
`
`Business Confidential Information, to be kept separate from the patent file,
`in each proceeding is granted;
`FURTHER ORDERED that the Joint Motion to Terminate Proceeding
`in each proceeding is granted; and
`FURTHER ORDERED that the Petition for Inter Partes Review in
`each proceeding is dismissed.
`
`
`
`
`
`3
`
`
`
`IPR2018-01290 (Patent 8,643,331 B1)
`IPR2018-01292 (Patent 8,203,305 B1)
`
`FOR PETITIONER:
`
`David A. Jakopin
`Patrick A. Doody
`PILLSBURY WINTHROP SHAW PITTMAN LLP
`David.jakopin@pillsburylaw.com
`Patrick.doody@pillsbrylaw.com
`
`
`FOR PATENT OWNER:
`
`David M. Hoffman
`FISH & RICHARDSON P.C.
`hoffman@fr.com
`
`
`
`
`
`4
`
`
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