`571-272-7822
`
`Paper No. 11
`Entered: April 9, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARM LTD. and ARM, INC.,
`Petitioner,
`
`v.
`
`COMPLEX MEMORY LLC,
`Patent Owner.
`____________
`
`Case IPR2019-00053 (Patent 5,890,195)
`Case IPR2019-00058 (Patent 6,658,576 B1)1
`____________
`
`Before KARL D. EASTHOM, DENISE M. POTHIER, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`POTHIER, Administrative Patent Judge.
`
`DECISION
`Motion to Dismiss
`37 C.F.R. §§ 42.5(a), 42.71(a)
`
`1 This Decision issues in both cases as it addresses identical issues in each.
`The parties, however, must seek prior authorization to use this heading style
`for any subsequent papers.
`
`
`
`IPR2019-00053, IPR 2019-00058
`Patent 5,890,195, Patent 6,658,576
`
`
`
`With authorization from the Board, Petitioner ARM Limited and
`ARM, Incorporated and Patent Owner Complex Memory LLC filed a Joint
`Motion to Dismiss Pursuant to 35 U.S.C. § 317(a) as Paper 9 and a Joint
`Request to File Settlement Agreement as Business Confidential Information
`Pursuant to 35 U.S.C. § 317(b)2 as Paper 8 in each of the above-captioned
`cases. The parties represent that they have reached agreement in the form of
`a “Patent License Agreement,” which is in writing and a true copy of which
`has been filed in conjunction with the above motions as required under 37
`C.F.R. § 42.74(b) as Exhibit 1019 in IPR2019-00053 and as Exhibit 1010 in
`IPR2019-00058. Paper 9, 2.
`At this early stage, we determine that dismissal is warranted in light of
`the parties’ joint request and their settlement agreement. See 37 C.F.R.
`§§ 42.5(a), 42.71(a). We further determine that the settlement agreement
`filed by the parties constitutes business confidential information. Therefore,
`the parties’ joint motions discussed above are granted.
`This paper does not constitute a final written decision pursuant to
`35 U.S.C. § 318(a).
`
`
`ORDER
`
`It is
`ORDERED that the parties’ joint motions to dismiss in the
`above-captioned cases are granted, and the petitions are dismissed;
`
`
`2 The parties mistakenly refer to paragraph (a). Paper 9, 1.
`
`2
`
`
`
`IPR2019-00053, IPR 2019-00058
`Patent 5,890,195, Patent 6,658,576
`
`
`
`FURTHER ORDERED that the parties’ Joint Requests to File
`Settlement Agreement as Business Confidential Information Pursuant to
`35 U.S.C. § 317 in the above-captioned petitions are granted, and
`FURTHER ORDERED that Exhibit 1019 in Case IPR2019-00053 and
`Exhibit 1010 in Case IPR2019-00058 each shall be kept separate from the
`pertinent files of the involved patents, consistent with 37 C.F.R. § 42.74(b)
`and (c).
`
`
`
`
`
`3
`
`
`
`IPR2019-00053, IPR 2019-00058
`Patent 5,890,195, Patent 6,658,576
`
`
`PETITIONER:
`Kevin Anderson
`kpanderson@duanemorris.com
`
`Scott Felder
`sfelder@wileyrein.com
`
`
`PATENT OWNER:
`
`Jeffrey Toler
`jtoler@tlgiplaw.com
`
`Daniel Ford
`dford@tlgiplaw.com
`
`4
`
`