Paper No.
`Filed: August 15, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`HTC Corporation,
`HTC America, Inc., and
`LG Electronics, Inc.,
`Petitioner
`
`v.
`
`Parthenon Unified Memory Architecture LLC
`Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2015-01502
`Patent No. 7,542,045
`
`
`
`
`
`
`
`
`JOINT MOTION TO TERMINATE PROCEEDING
`
`
`
`
`
`
`
`
`
`
`
`Filed: August 15, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`HTC Corporation,
`HTC America, Inc., and
`LG Electronics, Inc.,
`Petitioner
`
`v.
`
`Parthenon Unified Memory Architecture LLC
`Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2015-01502
`Patent No. 7,542,045
`
`
`
`
`
`
`
`
`JOINT MOTION TO TERMINATE PROCEEDING
`
`
`
`
`
`
`
`
`
`
`
`
`
`I.
`
`PRECISE RELIEF REQUESTED
`
`Case No. IPR2015-01502
`
`Pursuant to 35 U.S.C. § 317(a) and the Board’s authorization of the filing of
`
`this joint motion in its email to the parties on August 9, 2016, Petitioner LG
`
`Electronics, Inc. (“LG”) and Patent Owner Parthenon Unified Memory
`
`Architecture LLC (“PUMA”) jointly request that this inter partes review
`
`proceeding involving U.S. Patent No. 7,542,045 (“the ’045 Patent”) be terminated
`
`with respect to LG based on a settlement between LG and Patent Owner (“the
`
`Parties”).
`
`II. REASONS FOR GRANTING THE MOTION
`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). The Board authorized the filing of the
`
`instant motion on August 9, 2016. IPR2013-00428, Paper No. 56 provides
`
`guidance as to the content of a motion to terminate. There, the Board indicates that
`
`a joint motion, such as this one, should (a) include a brief explanation as to why
`
`termination is appropriate; (b) identify all parties in any related litigation involving
`
`the patent at issue; (c) identify any related proceedings currently before the Office,
`
`and (d) discuss specifically the current status of each such related litigation or
`
`proceeding with respect to each party to the litigation or proceeding. Id. at 2. This
`
`motion satisfies each of the above requirements and is accompanied by a copy of
`
`1
`
`
`
`
`the Parties’ settlement agreement, as required by 35 U.S.C. § 317(b) and 37 C.F.R.
`
`Case No. IPR2015-01502
`
`§ 42.74(b).
`
`Brief Explanation of Why Termination is Appropriate
`
`a.
`With respect to LG, termination is appropriate because a final written
`
`decision has not been reached in this proceeding and LG will no longer be
`
`participating in this proceeding. The Parties have settled their disputes and
`
`executed a settlement agreement to terminate this proceeding, as well as the
`
`Parties’ related district court litigation regarding the ’045 Patent: Parthenon
`
`Unified Memory Architecture LLC v. LG Electronics, Inc. et al., Case Number
`
`2:14-cv-00691 (E.D. Tex.). The district court litigation was dismissed with
`
`prejudice on August 5, 2016.
`
`b.
`
`All Parties in Any Pending Related Litigation Involving the
`Patents at Issue
`
`LG, LG Electronics USA, Inc., and PUMA are the only Parties to the related
`
`district court litigation, Case Number 2:14-cv-00691. The ’045 patent is also at
`
`issue in other pending litigation. In Parthenon Unified Memory Architecture LLC
`
`v. HTC Corp. et al., Case Number 2:14-cv-00690 (E.D. Tex.), the parties include
`
`PUMA, HTC America, Inc., and HTC Corp. In Parthenon Unified Memory
`
`Architecture LLC v. LG Elecs. MobileComm, USA, Case Number 2:15-cv-01950
`
`(E.D. Tex.), the parties include PUMA and LG Elecs. MobileComm USA, Inc. In
`
`Parthenon Unified Memory Architecture LLC v. ZTE Corp. et al., Case Number
`
`2
`
`
`
`
`2:15-cv-00225 (E.D. Tex.), the parties include PUMA, ZTE (TX) Inc., ZTE Corp.,
`
`Case No. IPR2015-01502
`
`and ZTE USA, Inc. In Parthenon Unified Memory Architecture LLC v. Apple Inc.,
`
`Case Number 2:15-cv-00621 (E.D. Tex.), the parties include PUMA and Apple
`
`Inc. No other litigation or proceeding involving the ’045 patent is contemplated in
`
`the foreseeable future.
`
`Related Proceedings Currently Before the Office
`
`c.
`In addition to the instant proceeding, LG and PUMA are Parties to IPR2015-
`
`01500, IPR2015-01501, IPR2016-00847, and IPR2016-00848. The Parties are
`
`currently filing motions to terminate in these related proceedings. Moreover, the
`
`’045 patent is at issue in IPR2016-00667, where a motion for joinder to the instant
`
`proceeding is pending. Further, PUMA and Apple Inc. are parties to IPR2016-
`
`01134 where no decision on institution has yet issued
`
`d.
`
`Current Status of Each Such Related Litigation or Proceeding
`With Respect to Each Party to the Litigation or Proceeding
`
`Sections II.b and c above indicate the status of each related litigation or
`
`proceeding with respect to each party to the litigation or proceeding. Additionally,
`
`Parthenon Unified Memory Architecture LLC v. LG Elecs. MobileComm, USA,
`
`Case Number 2:15-cv-01950 (E.D. Tex.) and Parthenon Unified Memory
`
`Architecture LLC v. ZTE Corp. et al., Case Number 2:15-cv-00225 (E.D. Tex.)
`
`were both dismissed on August 5, 2016.
`
`3
`
`
`
`
`III. SETTLEMENT AGREEMENT
`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), the Parties’
`
`Case No. IPR2015-01502
`
`settlement agreement is in writing, and a true and correct copy is being filed
`
`concurrently herewith as Exhibit 2012.1 The Parties are also filing concurrently
`
`herewith a joint request under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) to treat
`
`the settlement agreement as business confidential information and keep it separate
`
`from the files of the ’045 Patent. There are no collateral agreements or
`
`understandings made in connection with, or in contemplation of, the termination of
`
`the inter partes review.
`
`IV. CONCLUSION
`For all of these reasons, the Parties respectfully request termination of this
`
`
`
`Respectfully submitted,
`
`
`
`By: /s/ Masood Anjom
`Masood Anjom
`Reg. No. 62,167
`
`Counsel for Patent Owner Parthenon
`Unified Memory Architecture, LLC
`
`
`proceeding with respect to LG.
`
`Dated: August 15, 2016
`
`
`1 The settlement agreement is being filed via the Patent Review Processing System
`
`(PRPS) with access to the “Parties and Board only.”
`
`4
`
`
`
`
`
`Dated: August 15, 2016
`
`Case No. IPR2015-01502
`
`By: /s/ Rajeev Gupta by permission
`Rajeev Gupta
`Reg. No. 55,873
`
`Counsel for LG Electronics, Inc.
`
`
`
`5
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), I certify that I caused to be served on
`
`counsel a true and correct copy of the foregoing Joint Motion to Terminate
`
`Proceeding by electronic means on the date below at the following address of
`
`record:
`
`Lead Counsel for LG Electronics, Inc.
`
`Rajeev Gupta
`Reg. No. 55,873
`Finnegan, Henderson, Farabow, Garrett
`& Dunner, L.L.P.
`901 New York Avenue, N.W.
`Washington, D.C. 20001-4413
`Tel: (202) 408-4000
`Fax: (202) 408-4400
`Email: raj.gupta@finnegan.com
`
`Lead Counsel for HTC Corporation
`Joseph A. Micallef
`Reg. No. 39,772
`Sidley Austin LLP
`1501 K Street, N.W.
`Washington, DC 20005
`Tel: (202) 736-8492
`Email: jmicallef@sidley.com
`
`Back-up Counsel for LG Electronics,
`Inc.
`Darren M. Jiron
`Reg. No. 45,777
`Finnegan, Henderson, Farabow, Garrett
`& Dunner, L.L.P.
`11955 Freedom Drive
`Reston, VA 20190-5675
`Tel: (571) 203-2700
`Fax: (202) 408-4400
`Email: Darren.jiron@finnegan.com
`
`Back-up Counsel for HTC Corporation
`Stephen M. Everett
`Reg. No. 30,050
`Sidley Austin LLP
`555 California Street, Suite 2000
`San Francisco, CA 94104
`Tel: (415) 772-7482
`Email: Stephen.everett@sidley.com
`
`Dated: August 15, 2016
`
`
`
`Respectfully submitted,
`
`
`By: /s/ Masood Anjom
`Masood Anjom
`Reg. No. 62,167
`
`Counsel for Patent Owner Parthenon
`Unified Memory Architecture, LLC
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
