Trials@uspto.gov Paper 7
571-272-7822 Entered: January 22, 2021
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
TEXAS INSTRUMENTS INCORPORATED,
Petitioner,
v.
BELL SEMICONDUCTOR, LLC,
Patent Owner.
____________
IPR2020-01690
Patent 6,544,907 B1
____________
Before MITCHELL G. WEATHERLY, JO-ANNE M. KOKOSKI,
and JEFFREY W. ABRAHAM, Administrative Patent Judges.
KOKOSKI, Administrative Patent Judge.
DECISION
Settlement Prior to Institution of Trial
37 C.F.R. § 42.74
IPR2020-01690
Patent 6,544,907 B1
2
On January 7, 2021, with Board authorization, Petitioner (Texas
Instruments Incorporated) and Patent Owner (Bell Semiconductor LLC)
filed a Joint Motion to Terminate the above-referenced proceeding (Paper 6),
along with what the parties indicate is a true copy of the parties’ agreement
to terminate this proceeding (Ex. 1042). Paper 6 at 2.
In the Joint Motion, the parties represent that they filed a joint motion
and stipulation to dismiss with prejudice their respective claims and
counterclaims relating to the ’907 patent in the co-pending district court
litigation. Id. at 3. In that motion, Petitioner stipulated “to
terminate/withdraw IPR2020-01690.” Ex. 1042, 1. The District Court
granted the motion and approved the stipulation on November 9, 2020.
Ex. 1044. The parties represent that “[t]here are no other pending
proceedings between the Petitioner and Patent Owner relating to the
’907 patent.” Paper 6 at 3.
This proceeding is at an early stage and we have not yet decided
whether to institute a trial. In view of the early stage of this proceeding and
the agreement between the parties, we determine that good cause exists to
terminate this proceeding. Therefore, we grant the Joint Motion to
Terminate Proceeding.
This determination does not constitute a final written decision
pursuant to 35 U.S.C. § 318(a).
Accordingly, it is:
ORDERED that the Joint Motion to Terminate Proceeding (Paper 6)
is granted;
FURTHER ORDERED that IPR2020-01690 is terminated with
respect to both Petitioner and Patent Owner.
IPR2020-01690
Patent 6,544,907 B1
3
FOR PETITIONER:
Joshua A. Griswold
Thomas H. Reger II
Patrick J. Bisenius
FISH & RICHARDSON P.C.
griswold@fr.com
reger@fr.com
bisenius@fr.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
