`Filed: August 15, 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., and
`LG Electronics, Inc.,
`Petitioner
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`v.
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`Parthenon Unified Memory Architecture LLC
`Patent Owner
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`Case IPR2016-00847
`Patent No. 5,812,789
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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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`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 9, 2016, Petitioner LG
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`Electronics, Inc. (“LG”) and Patent Owner Parthenon Unified Memory
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`Architecture LLC (“PUMA”) jointly request that this inter partes review
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`proceeding involving U.S. Patent No. 5,812,789 (“the ’789 Patent”) be terminated
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`with respect to LG based on a settlement between LG and Patent Owner (“the
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`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 9, 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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`the Parties’ settlement agreement, as required by 35 U.S.C. § 317(b) and 37 C.F.R.
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`Case No. IPR2016-00847
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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 LG, termination is appropriate because a final written
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`decision has not been reached in this proceeding and LG 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 ’789 Patent: Parthenon
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`Unified Memory Architecture LLC v. LG Electronics, Inc. et al., Case Number
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`2:14-cv-00691 (E.D. Tex.). The district court litigation was dismissed with
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`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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`LG, LG Electronics USA, Inc., and PUMA are the only Parties to the related
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`district court litigation, Case Number 2:14-cv-00691. The ’789 patent is also at
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`issue in other pending litigation. In Parthenon Unified Memory Architecture LLC
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`v. HTC Corp. et al., Case Number 2:14-cv-00690 (E.D. Tex.), the parties include
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`PUMA, HTC America, Inc., and HTC Corp. In Parthenon Unified Memory
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`Architecture LLC v. LG Elecs. MobileComm, USA, Case Number 2:15-cv-01950
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`(E.D. Tex.), the parties include PUMA and LG Elecs. MobileComm USA, Inc. In
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`Parthenon Unified Memory Architecture LLC v. ZTE Corp. et al., Case Number
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`2
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`2:15-cv-00225 (E.D. Tex.), the parties include PUMA, ZTE (TX) Inc., ZTE Corp.,
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`Case No. IPR2016-00847
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`and ZTE USA, Inc. In Parthenon Unified Memory Architecture LLC v. Apple Inc.,
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`Case Number 2:15-cv-00621 (E.D. Tex.), the parties include PUMA and Apple
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`Inc. No other litigation or proceeding involving the ’789 patent is contemplated in
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`the foreseeable future.
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`Related Proceedings Currently Before the Office
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`c.
`In addition to the instant proceeding, LG and PUMA are Parties to IPR2015-
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`01500, IPR2015-01501, IPR2015-01502, and IPR2016-00848. The Parties are
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`currently filing motions to terminate these related proceedings. Moreover, the ’789
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`patent is at issue in IPR2016-00664, and IPR2016-00923, where motions for
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`joinder to the instant proceeding are pending. Further, PUMA and Apple Inc. are
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`parties to IPR2016-01135 where no decision on institution has yet 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. Additionally,
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`Parthenon Unified Memory Architecture LLC v. LG Elecs. MobileComm, USA,
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`Case Number 2:15-cv-01950 (E.D. Tex.) and Parthenon Unified Memory
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`Architecture LLC v. ZTE Corp. et al., Case Number 2:15-cv-00225 (E.D. Tex.)
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`were both dismissed on August 5, 2016.
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`3
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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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`Case No. IPR2016-00847
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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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`from the files of the ’789 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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`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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`proceeding with respect to LG.
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`Dated: August 15, 2016
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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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`4
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`Dated: August 15, 2016
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`Case No. IPR2016-00847
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`By: /s/ Rajeev Gupta by permission
`Rajeev Gupta
`Reg. No. 55,873
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`Counsel for LG Electronics, Inc.
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`5
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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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`Lead Counsel for LG Electronics, Inc.
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`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
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`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
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`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
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`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
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`Dated: August 15, 2016
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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