Bell Semiconductor, LLC

Patent Trials and Appeals BoardJun 1, 2021

IPR2021-00168 (P.T.A.B. Jun. 1, 2021)

Trials@uspto.gov Paper 17 571-272-7822 Entered: June 1, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ MICROCHIP TECHNOLOGY INCORPORATED and MICROSEMI CORPORATION, Petitioner, v. BELL SEMICONDUCTOR, LLC, Patent Owner. _______________ IPR2021-00123 (Patent 6,707,132 B1) IPR2021-00168 (Patent 6,624,007 B2) IPR2021-00177 (Patent 6,743,669 B1) IPR2021-00191 (Patent 7,221,173 B2)1 _______________ Before MITCHELL G. WEATHERLY, JO-ANNE M. KOKOSKI, JEFFREY W. ABRAHAM, and JULIET MITCHELL DIRBA, Administrative Patent Judges.2 DIRBA, Administrative Patent Judge. DECISION Settlement Prior to Institution of Trial 37 C.F.R. § 42.74 1 This Decision addresses an issue that is identical in all four cases. Therefore, we exercise our discretion to issue a single Decision to be filed in each case. The parties are not authorized to use this caption. 2 This is not an expanded panel of the Board; rather, the four judges are paneled in various groups of three in the subject cases. IPR2021-00123 (Patent 6,707,132 B1) IPR2021-00168 (Patent 6,624,007 B2) IPR2021-00177 (Patent 6,743,669 B1) IPR2021-00191 (Patent 7,221,173 B2) 2 On May 24, 2021, with Board authorization, Microchip Technology Incorporated and Microsemi Corporation (collectively “Petitioner”) and Bell Semiconductor, LLC (“Patent Owner”) submitted joint motions to terminate each of the above-identified proceedings. Paper 11 (“Joint Motions”).3 The parties also filed a confidential Settlement Agreement (Ex. 2033), along with joint requests to keep the Settlement Agreement confidential and separate (Paper 12 (“Joint Requests”)). In the Joint Motions, the parties represent that they have settled their dispute relating to the challenged patents. Paper 11, 1–3. The parties “confirm that any agreement or understanding between the parties made in connection with, or in contemplation of, the termination of the instant proceeding is in writing and a true copy is being filed with the Board. Specifically, the parties’ Settlement Agreement has been made in writing, and a true copy of the same is attached as Exhibit 2033.” Id. The above-identified proceedings are at an early stage, and we have not yet decided whether to institute a trial in any of 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. Therefore, we grant the Joint Motions. Additionally, upon review of the Joint Requests, which ask that the Settlement Agreement be treated as business confidential information and be 3 For purposes of expediency, we cite to papers filed in IPR2021-00123. The parties submitted similar papers and exhibits in IPR2021-00168 (Papers 14, 15; Exhibit 2033), IPR2021-00177 (Papers 15, 16; Exhibit 2033), and IPR2021-00191 (Papers 14, 15; Exhibit 2033). IPR2021-00123 (Patent 6,707,132 B1) IPR2021-00168 (Patent 6,624,007 B2) IPR2021-00177 (Patent 6,743,669 B1) IPR2021-00191 (Patent 7,221,173 B2) 3 kept separate from the files of the respective patents involved in the above- identified proceedings, 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). Therefore, we grant the Joint Requests. This determination does not constitute a final written decision pursuant to 35 U.S.C. § 318(a). Accordingly, it is: ORDERED that the Joint Motions (IPR2021-00123, Paper 11; IPR2021-00168, Paper 14; IPR2021-00177, Paper 15; and IPR2021-00191, Paper 14) are granted; FURTHER ORDERED that the Joint Requests (IPR2021-00123, Paper 12; IPR2021-00168, Paper 15; IPR2021-00177, Paper 16; and IPR2021-00191, Paper 15) are granted; FURTHER ORDERED that the Settlement Agreement in each proceeding (IPR2021-00123, Ex. 2033; IPR2021-00168, Ex. 2033; IPR2021-00177, Ex. 2033; and IPR2021-00191, Ex. 2033) shall be kept separate from the files of the involved patents (U.S. Patent 6,707,132, U.S. Patent 6,624,007, U.S. Patent 6,743,669, and U.S. Patent 7,221,173) 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); and FURTHER ORDERED that IPR2021-00123, IPR2021-00168, IPR2021-00177, and IPR2021-00191 are terminated with respect to both Petitioner and Patent Owner. IPR2021-00123 (Patent 6,707,132 B1) IPR2021-00168 (Patent 6,624,007 B2) IPR2021-00177 (Patent 6,743,669 B1) IPR2021-00191 (Patent 7,221,173 B2) 4 For PETITIONER: Bruce W. Slayden II Jerry F. Suva II Tecuan Flores Brian C. Banner SLAYDEN GRUBERT BEARD PLLC bslayden@sgbfirm.com jsuva@sgbfirm.com tflores@sgbfirm.com bbanner@sgbfirm.com For PATENT OWNER: Steven W. Hartsell Charles C. Koole Joseph M. Ramirez Tara M. Williams Alexander E. Gasser SKIERMONT DERBY LLP shartsell@skiermontderby.com ckoole@skiermontderby.com jramirez@skiermontderby.com twilliams@skiermontderby.com agasser@skiermontderby.com BellSemic_SDTeam@skiermontderby.com