Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 21
`Date: February 20, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`XILINX, INC.,
`Petitioner,
`
`v.
`
`POLARIS INNOVATIONS LIMITED,
`Patent Owner.
`______________________________
`
`IPR2023-00513 (Patent 7,532,523 B2)
`IPR2023-00516 (Patent 6,157,589)1
`______________________________
`
`
`
`Before JEAN R. HOMERE, BARBARA A. PARVIS, and
`NORMAN H. BEAMER, Administrative Patent Judges.
`
`PER CURIAM.
`
`
`
`TERMINATION
`Due to Settlement after Institution of Trial and
`Granting Request to File Settlement Agreement
`as Business Confidential Information
`35 U.S.C. § 317; 37 C.F.R. §42.74
`
`
`
`1 This Order addresses issues that are the same in each of the above
`captioned proceedings. We exercise our discretion to issue one Order to
`cover all the proceedings. The parties, however, are not authorized to use
`this style heading in subsequent papers.
`
`
`
`
`571-272-7822
`
`
`Paper No. 21
`Date: February 20, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`XILINX, INC.,
`Petitioner,
`
`v.
`
`POLARIS INNOVATIONS LIMITED,
`Patent Owner.
`______________________________
`
`IPR2023-00513 (Patent 7,532,523 B2)
`IPR2023-00516 (Patent 6,157,589)1
`______________________________
`
`
`
`Before JEAN R. HOMERE, BARBARA A. PARVIS, and
`NORMAN H. BEAMER, Administrative Patent Judges.
`
`PER CURIAM.
`
`
`
`TERMINATION
`Due to Settlement after Institution of Trial and
`Granting Request to File Settlement Agreement
`as Business Confidential Information
`35 U.S.C. § 317; 37 C.F.R. §42.74
`
`
`
`1 This Order addresses issues that are the same in each of the above
`captioned proceedings. We exercise our discretion to issue one Order to
`cover all the proceedings. The parties, however, are not authorized to use
`this style heading in subsequent papers.
`
`
`
`
`
`IPR2023-00513 (Patent 7,532,523 B2)
`IPR2023-00516 (Patent 6,157,589)
`
`
`INTRODUCTION
`I.
`On February 8, 2024, with the Board’s authorization, Petitioner and
`Patent Owner (collectively, “the Parties”) filed a Joint Motion to Terminate
`Proceeding. Paper 18 (“Joint Motion”).2 Along with the Joint Motion, the
`Parties filed a copy of a Highly Confidential Patent License, Tolling Stand-
`Still and Settlement Agreement. Ex. 1016 (“Settlement Agreement”). The
`Parties jointly request to file the Settlement Agreement as business
`confidential information and keep it separate from the file of U.S. Patent No.
`7,532,523 B2 (“the ’523 patent”). Paper 20 (“Joint Request”).
`DISCUSSION
`I.
`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.”
`35 U.S.C. § 317(a) also provides that if no petitioner remains in the inter
`partes review, the Office may terminate the review.
`In the Joint Motion, the Parties represent that the Settlement
`Agreement resolves their disputes involving the ’523 patent. Joint Motion 1.
`The Parties also represent that they have filed a true and correct copy of the
`Settlement Agreement (id.) and that “[t]here are no other collateral
`agreements or understandings, oral or written, between the Parties made in
`connection with, or in contemplation of, the termination of this proceeding.”
`Id. The Parties further “represent that their entire agreement in connection
`
`
`2 For purposes of expediency, we cite to papers and an exhibit filed in
`IPR2023-00513, unless otherwise noted. The Parties filed similar papers
`and exhibit in IPR2023-00516.
`
`2
`
`
`
`IPR2023-00513 (Patent 7,532,523 B2)
`IPR2023-00516 (Patent 6,157,589)
`
`with the termination of this proceeding is embodied in the [Settlement]
`Agreement.” Id.
`We instituted trial for IPR2023-00513 on September 14, 2023. See
`Paper 12. We have not yet decided the merits of the proceeding, and a final
`written decision has not been entered. Notwithstanding that the proceeding
`has moved beyond the preliminary stage, the Parties have shown adequately
`that termination of the proceeding is appropriate. Under these
`circumstances, we determine that good cause exists to terminate the
`proceeding with respect to the Parties.
`The Parties jointly request that the Settlement Agreement be treated as
`business confidential information and kept separate from the file of the ’523
`patent. Joint Request 1. We have reviewed the Settlement Agreement,
`which contains confidential business information regarding the settlement
`terms, and we determine that good cause exists to treat the Settlement
`Agreement as business confidential information pursuant to 35 U.S.C.
`§ 317(b) and 37 C.F.R. § 42.74(c) and keep it separate from the files of the
`’523 patent and this proceeding. Accordingly, we grant this aspect of the
`Parties’ Joint Request.
`The Parties also “that they be notified of [a] third party request and be
`given the opportunity to respond” if the “third party submits a written
`request to the Board for a copy of the settlement agreement along with a
`purported showing of good cause.” Joint Req. 2. However, neither the
`statute nor the regulation provides for any such notification, and the Parties
`have not provided any reason or special circumstance that would justify
`issuing an order that purports to impose an additional requirement.
`Accordingly, we deny that portion of the Parties’ Joint Request.
`
`3
`
`
`
`IPR2023-00513 (Patent 7,532,523 B2)
`IPR2023-00516 (Patent 6,157,589)
`
`
`II. ORDER
`
`Accordingly, it is:
`ORDERED that the Joint Motions to Terminate are granted, and
`IPR2023-00513 and IPR2023-00516 are terminated with respect to
`Petitioner and Patent Owner; and
`FURTHER ORDERED that the Parties’ joint requests to treat the
`Settlement Agreement as business confidential information are granted, and
`the Settlement Agreement shall be kept separate from the files of U.S. Patent
`Nos. 7,532,523 B2 and 6,157,589, and made available only to Federal
`Government agencies on written request, or to any person on a showing of
`good cause, pursuant to 37 C.F.R. § 42.74(c).
`
`
`
`
`
`
`
`
`
`4
`
`
`
`IPR2023-00513 (Patent 7,532,523 B2)
`IPR2023-00516 (Patent 6,157,589)
`
`For PETITIONER:
`
`Brian Oaks
`Aashish Kapadia
`Tessa Kroll
`Thomas Damario
`boaks@mwe.com
`akapadia@mwe.com
`tkroll@mwe.com
`tdamario@mwe.com
`
`For PATENT OWNER:
`
`David DeZern
`Brent Bumgardner
`david@nelbum.com
`brent@nelbum.com
`
`
`
`
`
`5
`
`
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