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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ASUSTEK COMPUTER, INC. and ASUS COMPUTER INTERNATIONAL,
`Petitioners
`
`v.
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`AVAGO TECHNOLOGIES GENERAL IP (SINGAPORE) PTE. LTD.,
`Patent Owner.
`
`
`Case No. IPR2016-00646
`U.S. Patent No. 5,870,087
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`
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`JOINT MOTION BY PETITIONERS AND PATENT OWNER TO
`TERMINATE PROCEEDING PURSUANT TO
`35 U.S.C. § 317 and 37 C.F.R. § 42.74
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`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74, Petitioners ASUSTeK
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`Computer, Inc. and ASUS Computer International (“ASUS”) and Patent Owner
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`Avago Technologies General IP (Singapore) Pte. Ltd. (“Avago”) jointly request
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`termination of the inter partes review of U.S. Patent No. 5,870,087 (“the 087
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`Patent”), Case No. IPR2016-00646. The Board authorized the parties to file this
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`Joint Request on May 15, 2017 via telephone.
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`I.
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`Termination of Case No. IPR2016-00646 Would Be Appropriate.
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`Termination of IPR2016-00646 by the Board would be appropriate. The
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`parties have executed a settlement agreement that resolves all of their disputes
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`concerning the 087 Patent—expressly including the present IPR—and the Board
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`has not yet conducted an oral hearing. Motions to terminate based on settlement
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`are routinely granted in the post-institution, pre-oral hearing timeframe. See, e.g.,
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`Oracle Amer. Inc., et al. v. Realtime Data LLC, Case IPR2016-00373 (PTAB Apr.
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`11, 2017) (Paper 30 at 3); Nike, Inc. v. Point 3 Basketball, LLC, Case No.
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`IPR2016-00396 (PTAB Feb. 22, 2017) (Paper 20 at 3); Amer. Megatrends, Inc., et
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`al. v. Kinglite Holdings Inc., Case IPR2016-00114 (PTAB Dec. 13, 2016) (Paper
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`22 at 2). Accordingly, good cause exists to terminate the proceedings based on
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`settlement as the Board has not yet conducted an oral hearing or otherwise resolved
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`the merits of the Petition.
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`1
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`As set forth in 35 U.S.C. § 317 and 37 C.F.R. § 42.74, the agreement has
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`been made in writing in the form of a settlement agreement executed by the parties,
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`and a true and correct copy of that settlement agreement has been filed as Exhibit
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`No. 2007.
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`The parties hereby represent that the document filed as Exhibit 2007
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`represents all agreements made in connection with, or in contemplation of, the
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`termination of this proceeding. All such agreements have been filed with the
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`Board as required by § 317(b) and 37 C.F.R. § 42.74(b).
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`As stated in 35 U.S.C. § 317(a), because ASUS and Avago request this
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`termination, no estoppel under 35 U.S.C. § 315(e) shall attach as to Petitioner
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`ASUS.
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`II.
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`Conclusion.
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`Therefore, ASUS and Avago respectfully request termination of the inter
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`partes review of U.S. Patent No. 5,870,087, Case No. IPR2016-00646.
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`Date: May 16, 2017
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`Date: May 16, 2017
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`
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`Respectfully submitted,
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`By: s/ Christopher TL Douglas
`Christopher TL Douglas
`Registration No. 56950
`Lead Counsel for Petitioner
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`By: s/ Kristopher L. Reed
`Kristopher L. Reed
`Registration No. 58694
`Lead Counsel for Patent Owner
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`2
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of this JOINT MOTION
`BY PETITIONERS AND PATENT OWNER TO TERMINATE
`PROCEEDING PURSUANT TO 35 U.S.C. § 317 and 37 C.F.R. § 42.74
`has been served May 16, 2017 via electronic service:
`
`Christopher TL Douglas
`Alston & Bird LLP
`101 South Tryon Street, Suite 4000
`Charlotte, NC 28280
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`christopher.douglas@alston.com
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`Michael J. Newton
`Derek Neilson
`Alston & Bird LLP
`2828 North Harwood Street
`18th Floor
`Dallas, TX 75201-2139
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`mike.newton@alston.com
`derek.neilson@alston.com
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`
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`s/ Kristopher L. Reed
`Kristopher L. Reed
`Registration No. 58694
`Kilpatrick Townsend & Stockton LLP
`1400 Wewatta Street, Suite 600
`Denver, Colorado 80202
`Telephone: 303-571-4000
`Fax: 303-571-4321
`Email: kreed@kilpatricktownsend.com
`Counsel for Patent Owner
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`3
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`Dated: May 16, 2017
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`69360675V.1
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