Paper No.
`Filed: May 24, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`HTC Corporation,
`HTC America, Inc.,
`LG Electronics, Inc.,
`Samsung Electronics Co., Ltd., and
`Samsung Electronics America, Inc.
`Petitioner
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`v.
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`Parthenon Unified Memory Architecture LLC
`Patent Owner
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`Case IPR2015-01501
`Patent No. 7,777,753
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`JOINT MOTION TO TERMINATE PROCEEDING
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`Filed: May 24, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`
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`HTC Corporation,
`HTC America, Inc.,
`LG Electronics, Inc.,
`Samsung Electronics Co., Ltd., and
`Samsung Electronics America, Inc.
`Petitioner
`
`v.
`
`Parthenon Unified Memory Architecture LLC
`Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2015-01501
`Patent No. 7,777,753
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`
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`JOINT MOTION TO TERMINATE PROCEEDING
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`Case No. IPR2015-01501
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`I.
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`PRECISE RELIEF REQUESTED
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`Pursuant to 35 U.S.C. § 317(a) and the Board’s authorization of the filing of
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`this joint motion in its email to the parties on May 20, 2016, Petitioners Samsung
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`Electronics Co., Ltd., and Samsung Electronics America, Inc. (collectively,
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`“Samsung”) and Patent Owner Parthenon Unified Memory Architecture LLC
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`(“PUMA”) jointly request that this inter partes review proceeding involving U.S.
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`Patent No. 7,777,753 (“the ’753 Patent”) be terminated with respect to Samsung
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`based on a settlement between Samsung and Patent Owner (“the Parties”).
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`II. REASONS FOR GRANTING THE MOTION
`Generally, the Board expects that a proceeding will terminate after the filing
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`of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed.
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`Reg. 48,756, 48,768 (Aug. 14, 2012). The Board authorized the filing of the
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`instant motion on May 20, 2016. IPR2013-00428, Paper No. 56 provides guidance
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`as to the content of a motion to terminate. There, the Board indicates that a joint
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`motion, such as this one, should (a) include a brief explanation as to why
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`termination is appropriate; (b) identify all parties in any related litigation involving
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`the patent at issue; (c) identify any related proceedings currently before the Office,
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`and (d) discuss specifically the current status of each such related litigation or
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`proceeding with respect to each party to the litigation or proceeding. Id. at 2. This
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`motion satisfies each of the above requirements and is accompanied by a copy of
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`1
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`Case No. IPR2015-01501
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`the Parties’ settlement agreement, as required by 35 U.S.C. § 317(b) and 37 C.F.R.
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`§ 42.74(b).
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`Brief Explanation of Why Termination is Appropriate
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`a.
`With respect to Samsung, termination is appropriate because a final written
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`decision has not been reached in this proceeding and Samsung will no longer be
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`participating in this proceeding. The Parties have settled their disputes and
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`executed a settlement agreement to terminate this proceeding, as well as the
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`Parties’ related district court litigation regarding the ’753 Patent: Parthenon
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`Unified Memory Architecture LLC v. Samsung Electronics Co., Ltd. et al., Case
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`Number 2:14-cv-00902 (E.D. Tex.). The district court litigation was dismissed
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`with prejudice on May 20, 2016.
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`b.
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`All Parties in Any Pending Related Litigation Involving the
`Patents at Issue
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`Samsung and PUMA are the only Parties to the related district court
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`litigation, Case Number 2:14-cv-00902. The ’753 patent is also at issue in other
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`pending litigation. In Parthenon Unified Memory Architecture LLC v. HTC Corp.
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`et al., Case Number 2:14-cv-00690 (E.D. Tex.), the parties include PUMA, HTC
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`America, Inc., HTC Corp., LG Elecs. USA, Inc., and LG Elecs., Inc. In Parthenon
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`Unified Memory Architecture LLC v. LG Elecs. MobileComm, USA, Case Number
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`2:15-cv-01950 (E.D. Tex.),
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`the parties
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`include PUMA and LG Elecs.
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`MobileComm USA, Inc. In Parthenon Unified Memory Architecture LLC v. ZTE
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`2
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`Case No. IPR2015-01501
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`Corp. et al., Case Number 2:15-cv-00225 (E.D. Tex.), the parties include PUMA,
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`ZTE (TX) Inc., ZTE Corp., and ZTE USA, Inc. In Parthenon Unified Memory
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`Architecture LLC v. Apple Inc., Case Number 2:15-cv-00621 (E.D. Tex.), the
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`parties include PUMA and Apple Inc. No other litigation or proceeding involving
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`the ’753 patent is contemplated in the foreseeable future.
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`Related Proceedings Currently Before the Office
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`c.
`In addition to the instant proceeding, Samsung and PUMA are Parties to
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`IPR2015-01500, IPR2015-01502, IPR2015-01944, and IPR2014-01946. The
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`Parties are currently filing motions to terminate in these related proceedings.
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`Moreover, the ’753 patent is at issue in IPR2016-00670, where a motion for
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`joinder to the instant proceeding is pending.
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`d.
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`Current Status of Each Such Related Litigation or Proceeding
`With Respect to Each Party to the Litigation or Proceeding
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`Sections II.b and c above indicate the status of each related litigation or
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`proceeding with respect to each party to the litigation or proceeding.
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`III. SETTLEMENT AGREEMENT
`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), the Parties’
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`settlement agreement is in writing, and a true and correct copy is being filed
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`concurrently herewith as Exhibit 1031.1 The Parties are also filing concurrently
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`1 The settlement agreement is being filed via the Patent Review Processing System
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`(PRPS) with access to the “Parties and Board only.”
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`3
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`Case No. IPR2015-01501
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`herewith a joint request under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) to treat
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`the settlement agreement as business confidential information and keep it separate
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`from the files of the ’753 Patent. There are no collateral agreements or
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`understandings made in connection with, or in contemplation of, the termination of
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`the inter partes review.
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`IV. CONCLUSION
`For all of these reasons, the Parties respectfully request termination of this
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`proceeding with respect to Samsung.
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`Respectfully submitted,
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`By: /Allan M. Soobert/
`Allan M. Soobert
`Reg. No. 36,284
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`Counsel for Samsung
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`By: /Masood Anjom/
`Masood Anjom
`Reg. No. 62,167
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`Counsel for Patent Owner Parthenon
`Unified Memory Architecture, LLC
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`4
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`Dated: May 24, 2016
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`Dated: May 24, 2016
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I certify that I caused to be served on
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`counsel a true and correct copy of the foregoing Joint Motion to Terminate
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`Proceeding by electronic means on the date below at the following address of
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`record:
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`Masood Anjom (manjom@azalaw.com)
`Alisa Lipski (alipski@azalaw.com)
`Amir Alavi (aalavi@azalaw.com)
`Ahmad, Zavitsanos, Anaipakos, Alavi & Mensing P.C.
`1221 McKinney, Suite 3460
`Houston, TX 77010
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`Respectfully submitted,
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`By: /Allan M. Soobert/
`Allan M. Soobert
`Reg. No. 36,284
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`Counsel for Samsung
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`Dated: May 24, 2016
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