Paper No.
`Filed: August 19, 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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`ZTE USA, Inc.
`Petitioner
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`v.
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`Parthenon Unified Memory Architecture LLC
`Patent Owner
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`Case IPR2016-00670
`Patent No. 7,777,753
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`JOINT MOTION TO TERMINATE PROCEEDING
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`Filed: August 19, 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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`ZTE USA, Inc.
`Petitioner
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`v.
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`Parthenon Unified Memory Architecture LLC
`Patent Owner
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`Case IPR2016-00670
`Patent No. 7,777,753
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`JOINT MOTION TO TERMINATE PROCEEDING
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`I.
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`PRECISE RELIEF REQUESTED
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`Case No. IPR2016-00670
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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 August 18, 2016, Petitioner ZTE
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`USA, Inc. (“ZTE”) and Patent Owner Parthenon Unified Memory Architecture
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`LLC (“PUMA”) jointly request that this inter partes review proceeding involving
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`U.S. Patent No. 7,777,753 (“the ’753 Patent”) be terminated with respect to ZTE
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`based on a settlement between ZTE 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 August 18, 2016. IPR2013-00428, Paper No. 56 provides
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`guidance as to the content of a motion to terminate. There, the Board indicates that
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`a joint 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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`the Parties’ settlement agreement, as required by 35 U.S.C. § 317(b) and 37 C.F.R.
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`Case No. IPR2016-00670
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`§ 42.74(b).
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`Brief Explanation of Why Termination is Appropriate
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`a.
`Termination is appropriate because a final written decision has not been
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`reached in this proceeding and ZTE will no longer be participating in this
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`proceeding. The Parties have settled their disputes and executed a settlement
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`agreement to terminate this proceeding, as well as the Parties’ related district court
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`litigation regarding the ’368 Patent: Parthenon Unified Memory Architecture LLC
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`v. ZTE Corp. et al., Case Number 2:15-cv-00225 (E.D. Tex.). The district court
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`litigation was dismissed with prejudice on August 5, 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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`ZTE, ZTE (TX) Inc., ZTE Corp., and PUMA are the only Parties to the
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`related district court litigation, Case Number 2:15-cv-00225. The ’753 patent is
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`also at issue in other pending litigation. In Parthenon Unified Memory
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`Architecture LLC v. HTC Corp. et al., Case Number 2:14-cv-00690 (E.D. Tex.),
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`the parties include PUMA, HTC America, Inc., and HTC Corp. In Parthenon
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`Unified Memory Architecture LLC v. Apple Inc., Case Number 2:15-cv-00621
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`(E.D. Tex.), the parties include PUMA and Apple Inc. No other litigation or
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`proceeding involving the ’753 patent is contemplated in the foreseeable future.
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`2
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`Case No. IPR2016-00670
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`Related Proceedings Currently Before the Office
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`c.
`In addition to the instant proceeding, ZTE and PUMA are Parties to
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`IPR2016-00664, IPR2016-00665, IPR2016-0666, and IPR2016-00667. 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 IPR2015-01501. Further, PUMA and
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`Apple Inc. are parties to IPR2016-01114 where no decision on institution has yet
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`issued.
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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 2001.1 The Parties are also filing concurrently
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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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`1 The settlement agreement contains business confidential information and is being
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`filed via the Patent Review Processing System (PRPS) with access to the “Parties
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`3
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`and Board only.”
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`from the files of the ’753 Patent. There are no collateral agreements or
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`Case No. IPR2016-00670
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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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`Respectfully submitted,
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`By: /s/ 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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`By: /s/ Lionel M. Levenue by permission
`Lionel M. Levenue
`Reg. No. 46,859
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`Counsel for ZTE USA, Inc.
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`proceeding with respect to ZTE.
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`Dated: August 19, 2016
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`Dated: August 19, 2016
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`4
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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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`Back-up Counsel for ZTE USA, Inc.
`Shaobin Zhu (Back-up Counsel)
`Reg. No. 62,741
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP Email:
`shaobin.zhu@finnegan.com
`Mirae Asset Tower, 28/F, Unit A-B
`USPTO
`No. 166 Lujiazui Ring Road, Pudong
`Shanghai, P.R. China, 200120
`Phone: (650) 521-3338
`Fax: (202) 408-4400
`Email: shaobin.zhu@finnegan.com
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`record:
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`Lead Counsel for ZTE USA, Inc.
`Lionel M. Lavenue
`Registration No. 46,589
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
`11955 Freedom Dr.
`Two Freedom Square
`Reston, VA 20190
`Tel: 571-203-2700
`Fax: 202-408-4400
`Email: lionel.lavenue@finnegan.com
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`Back-up Counsel for ZTE USA, Inc.
`Carlos J. Rosario
`Reg. No. 67,922
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
`Stanford Research Park
`3300 Hillview Avenue
`Palo Alto, CA 94304-1203
`Phone: (202) 408-6671
`Fax: (202) 408-4400
`Email: carlos.rosario@finnegan.com
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`Dated: August 19, 2016
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`Case No. IPR2016-00670
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`Respectfully submitted,
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`By: /s/ 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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`2
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