Dell Inc.v.NXP, B.V.

Patent Trial and Appeal BoardOct 29, 2015

12377616 (P.T.A.B. Oct. 29, 2015)

Trials@uspto.gov Paper 11 571-272-7822 Date: October 29, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD DELL INC., Petitioner, v. NXP B.V., Patent Owner. Case IPR2015-01349 Patent No. 8,280,304 B2 Before DONNA M. PRAISS, MICHAEL J. FITZPATRICK, and MINN CHUNG, Administrative Patent Judges. CHUNG, Administrative Patent Judge. DECISION Dismissing Petition Pursuant to Settlement 37 C.F.R. § 42.71(a) IPR2015-01349 Patent No. 8,280,304 B2 2 Petitioner, Dell Inc., filed a Petition to institute an inter partes review of claims 1–20 of U.S. Patent No. 8,280,304 B2 (“the ’304 patent”) pursuant to 35 U.S.C. § 311(a). Paper 1. Patent Owner, NXP B.V., filed a Preliminary Response pursuant to 35 U.S.C. § 313 and 37 C.F.R. § 42.107. Paper 7. On October 21, 2015, prior to our decision on institution and upon receiving leave to do so, the parties filed a “Joint Motion to Terminate” based on a settlement agreement that resolves the parties’ disputes related to the involved patent. 1 Paper 8. The parties also filed a copy of the settlement agreement (Paper 10) along with a “Joint Request To File Settlement Agreement As Business Confidential.” Paper 9; see also 37 C.F.R. § 42.74(c) (“A party to a settlement may request that the settlement be treated as business confidential information and be kept separate from the files of an involved patent or application.”). Under these circumstances, we determine that it is appropriate to dismiss the Petition. See 37 C.F.R. § 42.71(a). This paper does not constitute a final written decision pursuant to 35 U.S.C. § 318(a). Accordingly, it is: ORDERED that the Petition is dismissed; and FURTHER ORDERED that the settlement agreement (Paper 10) be treated as business confidential information and be kept separate from the files of the ’304 patent. 1 Technically, during a conference call on October 20, 2015, leave was granted to file a joint motion to dismiss the petition, not to terminate a proceeding that is yet to be instituted. IPR2015-01349 Patent No. 8,280,304 B2 3 PETITIONER: KEVIN MEEK PAYLA HEYMAN JEFFREY QUILICI kevin.meek@bakerbotts.com paula.heyman@bakerbotts.com jeff.quikici@bakerbotts.com PATENT OWNER: J. STEVEN BAUGHMAN MARK ROWLAND JAMES L. DAVIS, JR. steven.baughman@ropesgray.com mark.rowland@ropesgray.com james.l.davis@ropesgray.com

Dell Inc. v. NXP, B.V.