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`_____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________________
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`VOLKSWAGEN GROUP OF AMERICA, INC.
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`Petitioner
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`v.
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`ADVANCED SILICON TECHNOLOGIES LLC
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`Patent Owner
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`_____________________
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`Case IPR2016-00894
`Patent 8,933,945 B2
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`_____________________
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`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Inter Partes Review of U.S. Patent No. 8,933, 945
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`Petitioner Volkswagen Group of America, Inc. (“Petitioner”) and Patent
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`Owner Advanced Silicon Technologies LLC. (“Patent Owner”) have entered into a
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`confidential Agreement that resolves all underlying disputes between the parties,
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`including IPR2016-00894 against U.S. Patent No. 8,933,945. The parties are
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`concurrently filing a copy of the Agreement as Exhibit 1016 along with a request
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`to treat it as Confidential Business Information under 37 C.F.R. § 42.74(c) and 35
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`U.S.C. § 317(b), sealing it from the public absent a showing of good cause. The
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`undersigned represents that there are no other agreements, oral or written, between
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`the parties made in connection with, or in contemplation of, the termination of the
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`present proceeding and that Exhibit 1016 represents a true and accurate copy of the
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`agreement between the parties that resolves the present proceeding.
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`Accordingly, pursuant to 35 U.S.C. § 317, 37 C.F.R. § 42.72 and § 42.74,
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`and pursuant to the authorization to file this motion provided by the Board via
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`email to the parties on August 10, 2016, Petitioner and Patent Owner jointly
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`request termination of the present proceeding.
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`Public policy favors terminating the present inter partes review proceeding.
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`Congress and federal courts have expressed a strong interest in encouraging
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`settlement in litigation. See, e.g., Delta Air Lines, Inc. v. August, 450 U.S. 346, 352
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`(1981) (“The purpose of [Fed. R. Civ. P.] 68 is to encourage the settlement of
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`litigation.”); Bergh v. Dept. of Transp., 794 F.2d 1575, 1577 (Fed. Cir. 1986)
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`Inter Partes Review of U.S. Patent No. 8,933, 945
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`(“The law favors settlement of cases.”), cert. denied, 479 U.S. 950 (1986). The
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`Federal Circuit places a particularly strong emphasis on settlement. See Cheyenne
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`River Sioux Tribe v. U.S., 806 F.2d 1046, 1050 (Fed. Cir. 1986) (noting that the
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`law favors settlement to reduce antagonism and hostility between parties). And, the
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`Board’s Trial Practice Guide stresses that “[t]here are strong public policy reasons
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`to favor settlement between the parties to a proceeding.” Office Patent Trial
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`Practice Guide, 77 Fed. Reg. 48,756, 46,768 (Aug. 14, 2012).
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`Additionally, termination of the present proceeding at this stage, in view of
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`the Agreement, is appropriate as the Board has not yet “decided the merits of this
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`proceeding.” See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48756,
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`48768 (Aug. 14, 2012); see also 35 U.S.C. § 317. Indeed, this proceeding has not
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`yet been instituted, and no Motions or Petitions are currently outstanding. The
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`USPTO can conserve its resources through terminating the proceedings now,
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`removing the need for the Board to further consider the arguments, to issue an
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`Institution Decision, and to render a Final Written Decision. Furthermore, no other
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`party’s rights will be prejudiced by the termination of this proceeding.
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`Moreover, no additional disputes remain between Petitioner and Patent
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`Owner involving U.S. Patent No. 8,933,945 as the Agreement also resolves the two
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`pending litigations between the parties: Certain Computing or Graphics Systems,
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`Components Thereof, and Vehicles Containing Same, Inv. No. 337-TA-984 and
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`Inter Partes Review of U.S. Patent No. 8,933, 945
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`Advanced Silicon Technologies, LLC v. Volkswagen AG, 1:15-cv-01181 (D. Del.).
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`Additionally, the parties do not contemplate any further litigation or proceedings
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`related to U.S. Patent No. 8,933,945.
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`Lastly, in accordance with the guidelines established by the Board in
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`Heartland Tanning, Inc. v. Sunless, Inc., the parties hereby identify, and set forth
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`the status of, all other related litigation involving U.S. Patent No. 8,933,945. See
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`IPR2014-00018, PaperNo. 26, at *2 (P.T.A.B. July 28, 2014).
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`In the above-identified ITC Investigation, U.S. Patent No. 8,933,945 was
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`also asserted against respondents Harman International Industries Incorporated, et
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`al., Texas Instruments Incorporated, Renesas Electronics Corporation, et al.,
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`NVIDIA Corporation, Bayerische Motoren Werke AG, et al., and Honda Motor
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`Co., Ltd., et al. Respondent NVIDIA Corporation has been terminated from the
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`ITC Investigation, and joint motions to terminate the ITC investigation are pending
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`for all other respondents.
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`The status of all other related district court litigation involving U.S. Patent
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`No. 8,933,945 is as follows:
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`Case Caption
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`Current Status
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`Advanced Silicon Technologies LLC v.
`Harman International Industries
`Incorporated, et al., C.A. No. 1:15-cv-
`1173-RGA, United States District Court
`for the District of Delaware (filed on
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`Administratively closed in view of ITC
`Inv. No. 337-TA-984.
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`Inter Partes Review of U.S. Patent No. 8,933, 945
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`Case Caption
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`Current Status
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`December 21, 2015)
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`Advanced Silicon Technologies LLC v.
`Texas Instruments Incorporated, C.A.
`No. 1:15-cv-1175-RGA, United States
`District Court for the District of
`Delaware (filed on December 21, 2015)
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`Advanced Silicon Technologies LLC v.
`Renesas Electronics Corporation, et al.,
`C.A. No. 1:15-cv-1176-RGA, United
`States District Court for the District of
`Delaware (filed on December 21, 2015)
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`Advanced Silicon Technologies LLC v.
`NVIDIA Corporation, C.A. No. 1:15-cv-
`1177-RGA, United States District Court
`for the District of Delaware (filed on
`December 21, 2015)
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`Advanced Silicon Technologies LLC v.
`Bayerische Motoren Werke AG, et al.,
`C.A. No. 1:15-cv-1178-RGA, United
`States District Court for the District of
`Delaware (filed on December 21,2015)
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`Advanced Silicon Technologies LLC v.
`Honda Motor Co., Ltd., et al., C.A. No.
`1:15-cv-1179- RGA, United States
`District Court for the District of
`Delaware (filed on December 21, 2015)
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`Administratively closed in view of ITC
`Inv. No. 337-TA-984.
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`Administratively closed in view of ITC
`Inv. No. 337-TA-984.
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`Dismissed with prejudice.
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`Administratively closed in view of ITC
`Inv. No. 337-TA-984.
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`Administratively closed in view of ITC
`Inv. No. 337-TA-984.
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`Further, the following related Inter Partes Review proceedings for U.S.
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`Patent No. 8,933,945 are currently before the USPTO:
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`Case Caption
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`Current Status
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`Inter Partes Review of U.S. Patent No. 8,933, 945
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`Case Caption
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`Current Status
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`IPR2016-01060 – Unified Patents Inc.
`v. Advanced Silicon Technologies LLC
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`IPR2016-01108 – Texas Instruments
`Incorporated v. Advanced Silicon
`Technologies LLC
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`Pending Board decision on institution.
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`Pending Board decision on institution.
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`Again, the confidential Agreement entered into by the parties resolves all
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`underlying disputes between Petitioner and Patent Owner, including IPR2016-
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`00894. For at least this reason, as well as the other reasons set forth above, the
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`parties respectfully request that the Board terminate Inter Partes Review of U.S.
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`Patent No. 8,933,945, Case No. IPR2016-00894.
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`Inter Partes Review of U.S. Patent No. 8,933, 945
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`Date: August 16, 2016
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`
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`Respectfully submitted by:
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`/ Michael D. Specht /
`_______________________________
`Michael D. Specht (Registration No. 54,463)
`Daniel E. Yonan (Registration No. 53,812)
`Richard M. Bemben (Registration No. 68,658)
`Sterne, Kessler, Goldstein & Fox PLLC
`1100 New York Avenue, N.W.
`Washington, D.C.20005-3934
`(202) 371-2600
`Attorneys for Petitioner
`
`/s/ William A. Meunier
`________________________________
`William A. Meunier (Registration No. 41,193)
`Michael T. Renaud (Registration No. 44,299)
`Adam S. Rizk (Registration No. 66,867)
`MINTZ, LEVIN, COHEN, FERRIS,
`GLOVSKY AND POPEO, P.C.
`One Financial Center
`Boston, MA 02111
`Telephone: (617) 348-1615
`Facsimile: (617) 542-2241
`AdSilTechIPRs@mintz.com
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`Inter Partes Review of U.S. Patent No. 8,933, 945
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`CERTIFICATE OF SERVICE (37 C.F.R. §§ 42.6 (e), 42.105(a))
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`The undersigned hereby certifies that the above-captioned JOINT MOTION TO
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`TERMINATE PROCEEDING PURSUANT TO 35 U.S.C. § 317 and its associated
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`exhibits were served electronically via e-mail on August 16, 2016, in its entirety on the
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`following counsel of record for Patent Owner:
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`William A. Meunier (Lead Counsel)
`Michael T. Renaud (Back-up Counsel)
`Adam S. Rizk (Back-up Counsel)
`MINTZ, LEVIN, COHEN, FERRIS, GLOVSKY, AND POPEO, P.C.
`AdSilTechIPRs@mintz.com
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`Date: August 16, 2016
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
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`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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`/ Michael D. Specht /
`_______________________________
`Michael D. Specht (Registration No. 54,463)
`Daniel E. Yonan (Registration No. 53,812)
`Richard M. Bemben (Registration No. 68,658)
`Attorneys for Petitioner
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