MAXPOWER SEMICONDUCTOR, INC.

Patent Trials and Appeals BoardDec 1, 2021

IPR2021-01524 (P.T.A.B. Dec. 1, 2021)

Trials@uspto.gov Paper 9 571-272-7822 Entered: December 1, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ ROHM SEMICONDUCTOR USA, LLC, Petitioner, v. MAXPOWER SEMICONDUCTOR INC., Patent Owner. _______________ IPR2021-01524 Patent 7,923,804 B2 _______________ Before GARTH D. BAER, AARON W. MOORE, and MICHAEL T. CYGAN, Administrative Patent Judges. BAER, Administrative Patent Judge. DECISION Dismissal Prior to Institution of Trial 35 U.S.C. § 314 IPR2021-01524 Patent 7,923,804 B2 2 With prior Board authorization, Petitioner ROHM Semiconductor USA, LLC, filed a Motion to Dismiss the Petition. Paper 7. Patent Owner MaxPower Semiconductor, Inc. indicated that it does not oppose the motion. Paper 8. In the Motion, Petitioner represents that the United States District Court for the Northern District of California granted a petition of MaxPower Semiconductor Inc. (“Patent Owner”) to Compel Arbitration under 9 U.S.C. § 4, via an Order stating that “Rohm is . . . ordered to withdraw its two recently filed IPR petitions (IPR2021-01524 and IPR2021-1525) within 7 days” and that “[i]n the event the arbitrator determines that the patent disputes between MaxPower and Rohm are not subject to arbitration, Rohm may resume its effort to seek invalidation of MaxPower’s patents.” Paper 7, 1–2 (citing Maxpower Semiconductor, Inc. v. Rohm Semiconductor USA, LLC, Case No. 21-cv-07153-VC, Docket No. 26, at 4 (N.D. Cal. Oct. 29, 2021)). Petitioner’s Motion to dismiss has been filed to comply with the Court’s Order and is not opposed by Patent Owner, which submitted the District Court’s Order to the Board on October 29, 2021. See Paper 6. The Board has discretion to “take up petitions or motions for decisions in any order” and to “grant, deny, or dismiss any petition or motion” or enter any appropriate order. 37 C.F.R. § 42.71(a). This proceeding is at an early stage. Patent Owner has not filed a preliminary response, and we have not yet considered the Petition’s merits. In view of the circumstances of this proceeding, we determine it is appropriate to dismiss the Petition and terminate the proceeding to promote efficiency and minimize unnecessary costs. See 37 C.F.R. §§ 42.71(a), 42.1(b). Therefore, Petitioner’s unopposed Motion is granted. IPR2021-01524 Patent 7,923,804 B2 3 This paper does not constitute a final written decision pursuant to 35 U.S.C. § 318(a). Accordingly, it is: ORDERED that the Motion is granted; FURTHER ORDERED that the IPR2021-01524 Petition is dismissed; FURTHER ORDERED that the IPR2021-01524 proceeding is terminated; and FURTHER ORDERED that this paper does not constitute a final written decision pursuant to 35 U.S.C. § 318(a). Petitioner: James Hannah Aaron Frankel Jeffrey Price Jeffrey Eng Naftalis & Frankel LLP jhannah@kramerlevin.com afrankel@kramerlevin.com jprice@kramerlevin.com jeng@kramerlevin.com Patent Owner: Richard Neifeld Roger Cook rneifeld@neifeld.com roger@cookrlaw.com