Realtek Semiconductor Corporationv.Andrea Electronics Corporation

Patent Trial and Appeal BoardNov 3, 2015

09252874 (P.T.A.B. Nov. 3, 2015)

Trials@uspto.gov 571-272-7822 Paper No. 8 Date Entered: November 3, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ REALTECK SEMICONDUCTOR CORPORATION, Petitioner, v. ANDREA ELECTRONICS CORPORATION, Patent Owner. ____________ Case IPR2015-01394 Patent 6,363,345 B1 ____________ Before MICHAEL R. ZECHER, TREVOR M. JEFFERSON, and JEREMY M. PLENZLER, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION Termination of the Proceeding 37 C.F.R. §§ 42.72 and 42.74 IPR2015-01394 Patent 6,363,345 B1 I. DISCUSSION On October 16, 2015, the parties filed a Joint Motion to Terminate this proceeding (Paper 6), a true copy of the parties’ settlement agreement (Ex. 2001), and a request to treat the settlement agreement as business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (Paper 7). This proceeding is still in its preliminary stages. Petitioner, Realtek Semiconductor Corporation (“Realtek”), filed a Petition requesting an inter partes review of claims 1–25 and 38–47 of U.S. Patent No. 6,363,345 B1 (“the ’345 patent”) on July 13, 2015. Paper 1. Patent Owner, Andrea Electronics Corporation (“Andrea”), has not filed a Preliminary Response, and we have not entered a decision whether or not to institute an inter partes review. In the Joint Motion to Terminate this proceeding, the parties represent that they have settled their disputes regarding the ’345 patent. Paper 6, 2. The parties identify the following related matters: (1) the ’345 patent was asserted against multiple companies in the United States Court for the Eastern District of New York; (2) the ’345 patent is the subject of an International Trade Commission investigation; and (3) Realtek filed a breach of contract lawsuit concerning a licensing agreement related to the ’345 patent against Andrea in the United States Court for the Northern District of California. Id. at 2–4. The parties, however, do not represent that the ’345 patent is involved in any other proceedings before the Office. See generally id. Under these circumstances, we determine that it is appropriate to terminate this proceeding without rendering any further decisions. See 37 C.F.R. § 42.72. 2 IPR2015-01394 Patent 6,363,345 B1 II. ORDER In consideration of the foregoing, it is hereby: ORDERED that the parties’ request to treat the settlement agreement (Ex. 2001) as business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is GRANTED; and FURTHER ORDERED that the Joint Motion to Terminate this proceeding is GRANTED, and this proceeding is hereby terminated. 3 IPR2015-01394 Patent 6,363,345 B1 For PETITIONER: John M. Caracappa Tremayne M. Norris David L. Hecht Stanley C.T. Kuo Trevor C. Hill Steptoe & Johnson LLP jcaracap@steptoe.com tnorris@steptoe.com dhecht@steptoe.com skuo@steptoe.com thill@steptoe.com For PATENT OWNER: Andy H. Chan George S. Haight Yue (Lily) Li Griffin Mesmer Pepper Hamilton LLP chana@pepperlaw.com haightg@pepperlaw.com lil@pepperlaw.com mesmerg@pepperlaw.com 4

Realtek Semiconductor Corporation v. Andrea Electronics Corporation