`Tel: 571-272-7822
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`Paper No. 39
`Entered: April 4, 2023
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________
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`MICRON TECHNOLOGY, INC.,
`Petitioner,
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`v.
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`VERVAIN, LLC,
`Patent Owner.
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`IPR2021-01548
`Patent 9,196,385 B2
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`
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`Before STACEY G. WHITE, JON M. JURGOVAN, and STEVEN M.
`AMUNDSON, Administrative Patent Judges.
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`JURGOVAN, Administrative Patent Judge.
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`TERMINATION
`Due to Settlement After Institution of Trial
`35 U.S.C. § 317; 37 C.F.R. § 42.74
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`IPR2021-01548
`Patent 9,196,385 B2
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`I.
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`INTRODUCTION
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`With the Board’s authorization, Petitioner Micron Technology, Inc.
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`and Patent Owner Vervain, LLC (collectively, “the Parties”) filed a Joint
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`Motion to Terminate in the above-captioned proceeding involving U.S.
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`Patent No. 9,196,385 B2 (“the ’385 patent”). Paper 36 (“Joint Motion”).
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`Along with the Joint Motion, the Parties filed a copy of a Settlement
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`Agreement (Ex. 1072, “Agreement”) and an Executed Settlement
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`Agreement (Ex. 1073, “Executed Agreement”), as well as Joint Requests
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`that the Agreement and Executed Agreement be treated as business
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`confidential information and kept separate from the file of the patent
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`involved in the above-captioned proceeding. Paper 37 (“Joint Request-
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`Agreement”), 38 (“Joint Request-Executed Agreement”) (collectively “Joint
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`Requests”).
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`II. DISCUSSION
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`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
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`this chapter shall be terminated with respect to any petitioner upon the joint
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`request of the petitioner and the patent owner, unless the Office has decided
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`the merits of the proceeding before the request for termination is filed.”
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`35 U.S.C. § 317(a) also provides that if no petitioner remains in the inter
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`partes review, the Office may terminate the review.
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`In the Joint Motion, the Parties represent that they “have reached a
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`settlement as to all the disputes in this proceeding and as to the ’385 patent
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`between the parties.” Joint Motion 3. The Parties provided a copy of the
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`Agreement and Executed Agreement. Ex. 1072, 1073. The Parties represent
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`that “[n]o other such agreements, written or oral, exist between or among the
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`Settling Parties.” Id.
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`2
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`IPR2021-01548
`Patent 9,196,385 B2
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`We instituted trial for the above-identified inter partes review
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`proceeding (see Paper 11), but we have not yet decided the merits of the
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`proceeding, and final written decision has not been entered. Under these
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`circumstances, we determine that it is appropriate to terminate the
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`proceeding.
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`In the Joint Requests, the Parties request that the Agreement and
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`Executed Agreement be treated as business confidential information and
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`kept separate from the file of the patent involved in the above-captioned
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`proceeding. Joint Request-Agreement 1, Joint Request-Executed Agreement
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`1. After reviewing the Agreement and Executed Agreement, we determine
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`that it is appropriate to treat these documents as business confidential
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`information pursuant to 37 C.F.R. § 42.74(c).
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`This Order does not constitute a final written decision pursuant to
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`35 U.S.C. § 318(a).
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`Accordingly, it is:
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`III. ORDER
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`ORDERED that the Joint Motion to Terminate is granted, and
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`IPR2021-01548 is terminated; and
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`FURTHER ORDERED that the Joint Requests to treat the Agreement
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`(Ex. 1072) and Executed Agreement (Ex. 1073) as business confidential
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`information are granted, and the Agreement and Executed Agreement shall
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`be kept separate from the file of U.S. Patent No. 9,196,385 B2, and made
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`available only to Federal Government agencies on written request, or to any
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`person on a showing of good cause, pursuant to 37 C.F.R. § 42.74(c).
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`3
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`IPR2021-01548
`Patent 9,196,385 B2
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`FOR PETITIONER:
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`Jeremy Jason Lang
`Jared Bobrow
`Parth Sagdeo
`Christopher Childers
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`jlang@orrick.com
`jbobrow@orrick.com
`psagdeo@orrick.com
`cchilders@orrick.com
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`FOR PATENT OWNER:
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`Alan Whitehurst
`James E. Quigley
`Christopher P. McNett
`MCKOOL SMITH, P.C.
`awhitehurst@mckoolsmith.com
`jquigley@mckoolsmith.com
`cmcnett@mckoolsmith.com
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`4
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