Bell Semiconductor LLC

Patent Trials and Appeals Board

Aug 6, 2021

IPR2021-01122 (P.T.A.B. Aug. 6, 2021)

Trials@uspto.gov Paper 10
571-272-7822 Entered: August 6, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

RENESAS ELECTRONICS AMERICA INC.,
Petitioner,
v.
BELL SEMICONDUCTOR LLC,
Patent Owner.

IPR2021-01122 (Patent 8,049,340 B2)1
IPR2021-01123 (Patent 8,288,269 B2)

Before JO-ANNE M. KOKOSKI, JEFFREY W. ABRAHAM, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.
ABRAHAM, Administrative Patent Judge.
DECISION
Settlement Prior to Institution of Trial
37 C.F.R. § 42.74

1 This Order addresses issues that are the same in all identified proceedings.
We exercise our discretion to issue one Order to be filed in each proceeding.
The parties, however, are not authorized to use this style heading in
subsequent papers.
IPR2021-01122 (Patent 8,049,340 B2)
IPR2021-01123 (Patent 8,288,269 B2)
2
I. INTRODUCTION
On July 22, 2021, pursuant to our July 20, 2021 e-mail authorization,
Petitioner and Patent Owner (collectively, “the Parties”) filed a Joint Motion
to Terminate in each of the above-identified proceedings. Paper 82 (“Joint
Motion”). In support of the Joint Motion, the Parties filed a copy of a
Settlement and Patent License Agreement agreed upon by the Parties and
settling their dispute in each of the above-identified proceedings. Ex. 1031
(“Settlement Agreement”). Additionally, the Parties jointly filed a Request
to Treat Settlement Agreement Confidential and Separate pursuant to
37 C.F.R. § 42.74(c) in each of the above-identified proceedings. Paper 9
(“Joint Request”).
II. DISCUSSION
In the Joint Motion, the Parties represent that they have reached an
agreement to jointly seek termination of the above-identified inter partes
review proceedings, that the filed copy of the Settlement Agreement is a true
and correct copy, and that there are no other agreements or understandings
between the parties made in connection with, or in contemplation of, the
termination of these proceedings. Paper 8, 1.
These proceedings are at an early stage, and we have not yet decided
whether to institute a trial in these proceedings. In view of the early stage of
these proceedings and the settlement between the Parties, we determine that
good cause exists to terminate these proceedings with respect to the Parties.
The Parties also filed a Joint Request that the Settlement Agreement
be treated as business confidential information and be kept separate from the

2 Citations are to papers and exhibits filed in IPR2021-01122, unless
otherwise indicated. The Parties filed similar papers and exhibits in
IPR2021-01123.
IPR2021-01122 (Patent 8,049,340 B2)
IPR2021-01123 (Patent 8,288,269 B2)
3
file of the patents involved in these inter partes proceedings. Paper 9, 1–2.
After reviewing the Settlement Agreement between Petitioner and Patent
Owner, we find that the Settlement Agreement contains confidential
business information regarding the terms of settlement. We determine that
good cause exists to treat the Settlement Agreement between Petitioner and
Patent Owner as business confidential information pursuant to 37 C.F.R.
§ 42.74(c).
This Order does not constitute a final written decision pursuant to 35
U.S.C. § 318(a).
III. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Joint Motion to Terminate IPR2021-01122 and
the Joint Motion to Terminate IPR2021-01123 are granted and the
proceedings are terminated with respect to Petitioner and Patent Owner; and
FURTHER ORDERED that the Joint Request to Treat Settlement
Agreement Confidential and Separate is granted, and the Settlement
Agreement shall be kept separate from the files of U.S. Patent Nos.
8,049,340 B2 and 8,288,269 B2 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).
IPR2021-01122 (Patent 8,049,340 B2)
IPR2021-01123 (Patent 8,288,269 B2)
4
FOR PETITIONER:
Liang Huang
Michael Mauriel
MAURIEL KAPOUYTIAN WOODS LLP
rhuang@mkwllp.com
mmauriel@mkwllp.com

FOR PATENT OWNER:
H. Annita Zhong
IRELL & MANELLA LLP
hzhong@irell.com