UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ MICROSEMI CORP., Petitioner, v. E.DIGITAL CORPORATION, Patent Owner. Case IPR2015-01120 Patent 5,839,108 ____________ Before LYNNE E. PETTIGREW, DAVID C. MCKONE, and KRISTINA M. KALAN, Administrative Patent Judges. KALAN, Administrative Patent Judge. TERMINATION Dismissing the Proceeding 37 C.F.R. § 42.5(a), 37 C.F.R. § 42.71(a) IPR2015-01120 Patent 5,839,108 2 The parties have requested that the above-captioned proceeding be terminated pursuant to a settlement. The Board authorized the parties to file a joint motion to terminate the above-captioned proceeding on August 6, 2015. Paper 13. On August 17, 2015, and pursuant to 35 U.S.C. § 317, the parties filed a joint motion to terminate the above-captioned proceeding (Paper 14) and a joint request to treat the settlement agreement as business confidential information, to be kept separate from the patent file pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (Paper 15), along with a copy of the settlement agreement (Ex. 1016). Generally, the Board expects that a proceeding will terminate after the filing of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). This case is in the preliminary proceeding stage. A preliminary proceeding begins with the filing of a petition for instituting a trial and ends with a written decision as to whether trial will be instituted. See 37 C.F.R. § 42.2. Petitioner filed a Petition on April 28, 2015. Paper 1. Patent Owner has not filed a Preliminary Response. No decision whether to institute a trial has been made. The joint motion to terminate indicates that the parties have settled all of their disputes involving U.S. Patent No. 5,839,108 (“the ’108 patent”). Paper 14, 1. The joint motion to terminate further indicates that the parties “have agreed to jointly request termination of this proceeding.” Id. The parties represent that they “have agreed to settle and dismiss their related district court litigation (e.Digital Corporation v. Microsemi Corporation, et al., Southern District of California Case No. 3:15-CV-00319-H-BGS).” Id. IPR2015-01120 Patent 5,839,108 3 The parties further represent that the district court proceeding was dismissed with prejudice on August 14, 2015. Id. at 2. Based on the facts of the case, and in view of the parties’ joint request for termination of this proceeding, we determine that it is appropriate to dismiss the petition as to both Petitioner and Patent Owner without rendering either a decision to institute or a final written decision. See 37 C.F.R. §§ 42.5(a); 42.71(a). Therefore, the joint motion to terminate and the joint request to treat the settlement agreement as business confidential information are granted. This paper does not constitute a final written decision pursuant to 35 U.S.C. § 318(a). Accordingly, it is ORDERED that the joint request to treat the settlement agreement as business confidential information, to be kept separate from the patent file, is granted; FURTHER ORDERED that the joint motion to terminate the proceeding is granted; and FURTHER ORDERED that the Petition for Inter Partes Review of the above-referenced patent is dismissed. IPR2015-01120 Patent 5,839,108 4 FOR PETITIONER: Mark Itri mitri@mwe.com Michael Dreznes mdreznes@mwe.com McDERMOTT WILL & EMERY LLP FOR PATENT OWNER: Robert E. Purcell rpurcell@repurcelllaw.com THE LAW OFFICE OF ROBERT E. PURCELL, PLLC
