ORDER
Granting Petitioner's Motion to Terminate the Proceedings
37 C.F.R. § 42.71(a) Dismissal Prior to Institution of Trial
35 U.S.C. § 314
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Petitioner Micron Technology Inc. filed a motion to terminate the inter partes review of U.S. Patent No. 12,010,838 ("the '838 patent"), Paper 14 ("Motion" or "Mot."). Petitioner states that it has filed a separate proceeding, namely PGR2025-00021 ("the '838 PGR"), which is the proper proceeding to address the unpatentability of the '838 patent's claims. Mot. 1-2. Petitioner further states that Patent Owner Yangtze Memory Technologies Company, Ltd. does not oppose this motion. Id. at 1. For the reasons discussed below, Petitioner's Motion is granted.
II. DISCUSSION
The Board may terminate a trial without rendering a final written decision, where appropriate." 37 C.F.R. § 42.72. Moreover, under 37 C.F.R. § 42.71(a), the Board "may grant, deny, or dismiss any petition," as appropriate under the circumstances.
35 U.S.C. § 311(c) states that a "petition for inter partes review shall be filed after the later of either-- (1) the date that is nine months after the grant of a patent; or (2) if a post-grant review is instituted under chapter 32, the date of the termination of such post-grant review."
Here, the '838 patent issued on June 11, 2024 and the present Petition for inter partes review (Paper 1) was filed less than 9 months later. See Mot. 1; Ex. 1001, code (45). Additionally, no decision on institution in the '838 PGR has been issued, nor has there been a termination of any post-grant review of the '838 Patent. Thus, the present Petition was not timely filed under § 311(c). See SharkNinja, Inc. v. Dyson Tech. Ltd., IPR2023-01323, Paper 7, 2-3 (PTAB Nov. 28, 2023) (dismissing petition in pre-institution phase where the petition challenged claims not yet eligible for IPR under 35 U.S.C. § 311(c)); see also Neurent Medical Inc. v. The
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Foundry LLC, IPR2024-00281, Paper 10 at 3, 9 (PTAB. Apr. 24, 2024) (dismissing petition without prejudice and terminating proceeding in view of potential dispute about the timing of the petition's filing under § 311(c)). Under the present circumstances, we agree with Petitioner that the present Petition should be dismissed. See SharkNinja, Inc. v. Dyson Tech. Ltd., IPR2023-01323, Paper 7 at 2-3 (PTAB Nov. 28, 2023) (dismissing petition in pre-institution phase where the petition challenged claims not yet eligible for IPR under 35 U.S.C. § 311(c)); see also Neurent Medical Inc. v. The Foundry LLC, IPR2024-00281, Paper 10 at 3, 9 (PTAB Apr. 24, 2024) (dismissing petition without prejudice and terminating proceeding in view of potential dispute about the timing of the petition's filing under § 311(c)). Petitioner certifies that there are no other agreements, oral or written, between the parties made in connection with, or in contemplation of, termination of the proceeding. Mot. 2.
III. ORDER
It is
ORDERED that Petitioner's unopposed Motion to Terminate the proceeding is granted, and
FURTHER ORDERED that the Petition (Paper 1) is dismissed.
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FOR PETITIONER:
K. Herman
Jeremy Lang ORICK, HERRINGTON & SUTCLIFFE LLP p52ptabdocket@orrick.com ptabdocketjjl2@orrick.com
FOR PATENT OWNER:
Inge Osman
Brenda Danek Steven Peters LATHAM & WATKINS LLP inge.osman@lw.com brenda.danek@lw.com speters@cgsh.com