Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 32
`Entered: June 25, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`SK HYNIX INC. and SK HYNIX AMERICA INC.,
`Petitioner,
`v.
`BITMICRO, LLC,
`Patent Owner.
`_______________
`
`IPR2018-01410 and IPR2018-01411 (Patent 6,529,416 B2)
`IPR2018-01545 (Patent 8,093,103 B2)
`IPR2018-01720 (Patent 7,826,243 B2)1
`_______________
`
`
`Before KEN B. BARRETT, KRISTINA M. KALAN, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`PER CURIAM.
`
`
`ORDER
`Termination of the Proceedings
`35 U.S.C. § 317; 37 C.F.R. §§ 42.72, 42.74
`
`
`
`
`1 This Order addresses issues that are the same in each of the above-
`identified proceedings. We exercise our discretion to issue one Order to be
`entered in each proceeding. The Parties are not authorized to use this joint
`heading and filing style in their papers.
`
`

`

`IPR2018-01410 and IPR2018-01411 (Patent 6,529,416 B2)
`IPR2018-01545 (Patent 8,093,103 B2)
`IPR2018-01720 (Patent 7,826,243 B2)
`
`
`Petitioner and Patent Owner (collectively, “the parties”) have
`requested that the above-identified proceedings be terminated pursuant to a
`settlement. The Board authorized the parties to file a joint motion to
`terminate the above-identified proceedings on May 21, 2019.
`On June 13, 2019, and pursuant to 35 U.S.C. § 317(a), the parties filed
`Joint Motions to Terminate each of these proceedings (collectively “Joint
`Motions to Terminate”) (Paper 302) and Joint Requests to file the settlement
`agreement as business confidential information and to be kept separate from
`the patent file pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c)
`(collectively “Joint Requests”) (Paper 313), along with a copy of the written
`settlement agreement in each proceeding (Ex. 10144).
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
`this chapter 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.” It is
`also provided in 35 U.S.C. § 317(a) that if no petitioner remains in the inter
`partes review, the Office may terminate the review.
`Additionally, the Board expects that a proceeding will terminate after
`
`
`2 For purposes of expediency, we cite to Papers filed in IPR2018-01410.
`Petitioner filed a similar Joint Motion to Terminate in IPR2018-01411
`(Paper 30), IPR2018-01545 (Paper 20), and IPR2018-01720 (Paper 20).
`3 Petitioner filed similar Joint Requests in IPR2018-01411 (Paper 31),
`IPR2018-01545 (Paper 21), and IPR2018-01720 (Paper 21).
`4 For purposes of expediency, we cite to the copy of the written settlement
`agreement filed in IPR2018-01410. Petitioner also filed a copy of the
`written settlement agreement in each of IPR2018-01411 (Ex. 1108),
`IPR2018-01545 (Ex. 1034), and IPR2018-01720 (Ex. 1035).
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`

`

`IPR2018-01410 and IPR2018-01411 (Patent 6,529,416 B2)
`IPR2018-01545 (Patent 8,093,103 B2)
`IPR2018-01720 (Patent 7,826,243 B2)
`
`the filing of a settlement agreement. See, e.g., Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). We instituted trial in
`each of the above-identified proceedings (IPR2018-01410, Paper 14 (dated
`January 23, 2019); IPR2018-01411, Paper 14 (dated January 23, 2019);
`IPR2018-01545, Paper 14 (dated March 7, 2019); and IPR2018-01720,
`Paper 14 (dated March 29, 2019)). Thus, each of the above-identified
`proceedings is a trial subject to termination under 37 C.F.R. § 42.72.
`See 37 C.F.R. § 42.72. We have not yet decided the merits of the above-
`identified proceedings, and final written decisions have not been entered in
`these proceedings. Notwithstanding that these proceedings have moved
`beyond the preliminary stage, the parties have shown adequately that the
`termination of these proceedings is appropriate. Under these circumstances,
`we determine that good cause exists to terminate these proceedings with
`respect to the parties.
`The parties represent that Exhibit 1014 is a true copy of the settlement
`agreement between the parties. Paper 30, 3. The parties state “[t]his
`settlement agreement is the only agreement or understanding between SK
`Hynix [i.e., SK Hynix Inc. and SK Hynix America Inc.] and Patent Owner
`made in connection with, or in contemplation of dismissing SK Hynix.” Id.
`at 1, 3. The parties represent that, pursuant to the settlement agreement, they
`have agreed to terminate not only the above-identified proceedings but also
`the underlying district court litigation between them (18-CV-03505 (N.D.
`Cal.)) and the underlying International Trade Commission investigation
`(ITC Inv. No. 337-TA-1097). Id. at 2–3.
`Based on the facts of these proceedings, and in view of the parties’
`
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`

`

`IPR2018-01410 and IPR2018-01411 (Patent 6,529,416 B2)
`IPR2018-01545 (Patent 8,093,103 B2)
`IPR2018-01720 (Patent 7,826,243 B2)
`
`Joint Motions to Terminate, we are persuaded that it is appropriate to
`terminate these proceedings with respect to both Petitioner and Patent
`Owner without rendering any further decisions. See 37 C.F.R. §§ 42.5(a),
`42.72. Therefore, the Joint Motions to Terminate and the Joint Requests to
`treat the settlement agreement as business confidential information are
`granted.
`This Order does not constitute a final written decision pursuant to
`35 U.S.C. § 318(a).
`Accordingly, it is
`ORDERED that the Joint Requests that the settlement agreements
`(IPR2018-01410, Ex. 1014; IPR2018-01411, Ex. 1108; IPR2018-01545,
`Ex. 1034; and IPR2018-01720, Ex. 1035) be treated as business confidential
`information and be kept separate from the files of the above-identified
`proceedings and from the files of the involved patents under the provisions
`of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), are granted;
`FURTHER ORDERED that the Joint Motions to Terminate the
`above-identified proceedings are granted; and
`FURTHER ORDERED that the above-identified proceedings are
`terminated with respect to both Petitioner and Patent Owner pursuant
`to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72.
`
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`IPR2018-01410 and IPR2018-01411 (Patent 6,529,416 B2)
`IPR2018-01545 (Patent 8,093,103 B2)
`IPR2018-01720 (Patent 7,826,243 B2)
`
`
`
`FOR PETITIONER:
`
`F. Christopher Mizzo
`Craig Murray
`Gregory S. Arovas
`G. William Foster
`KIRKLAND & ELLIS LLP
`chris.mizzo@kirkland.com
`craig.murray@kirkland.com
`greg.arovas@kirkland.com
`billy.foster@kirkland.com
`
`Joseph Colaianni
`Linhong Zhang
`David Holt
`FISH & RICHARDSON P.C
`colaianni@fr.com
`lwzhang@fr.com
`holt2@fr.com
`
`FOR PATENT OWNER:
`
`Wayne M. Helge
`James T. Wilson
`Aldo Noto
`DAVIDSON BERQUIST JACKSON & GOWDEY L.L.P.
`whelge@dbjg.com
`jwilson@dbjg.com
`anoto@davidsonberquist.com
`
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