IPR2016-01060
`Patent 8,933,945
`
`Filed on behalf of Unified Patents Inc.
`
`Jonathan Stroud, Reg. No. 72,518
`Unified Patents Inc.
`1875 Connecticut Ave. NW, Floor 10
`Washington, D.C., 20009
`Tel: (202) 805-8931
`Email: jonathan@unifiedpatents.com
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________________________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________________________
`
`
`
`UNIFIED PATENTS INC.
`Petitioner
`
`v.
`ADVANCED SILICON TECHNOLOGIES LLC
`Patent Owner
`
`
`
`
`
`IPR2016-01060
`Patent 8,933,945
`
`JOINT MOTION TO TERMINATE
`UNDER 35 U.S.C. § 317(a)
`
`
`
`Patent 8,933,945
`
`Filed on behalf of Unified Patents Inc.
`
`Jonathan Stroud, Reg. No. 72,518
`Unified Patents Inc.
`1875 Connecticut Ave. NW, Floor 10
`Washington, D.C., 20009
`Tel: (202) 805-8931
`Email: jonathan@unifiedpatents.com
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________________________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________________________
`
`
`
`UNIFIED PATENTS INC.
`Petitioner
`
`v.
`ADVANCED SILICON TECHNOLOGIES LLC
`Patent Owner
`
`
`
`
`
`IPR2016-01060
`Patent 8,933,945
`
`JOINT MOTION TO TERMINATE
`UNDER 35 U.S.C. § 317(a)
`
`
`
`
`IPR2016-01060
`Patent 8,933,945
`Pursuant to 35 U.S.C. § 317(a), Petitioner Unified Patents Inc.
`
`
`
`(“Petitioner” or “Unified”) and Patent Owner Advanced Silicon
`
`Technologies LLC (“Patent Owner” or “AST”) jointly request termination of
`
`the Inter Partes Review of U.S. Patent 8,933,945 in IPR2016-01060.
`
`Petitioner and Patent Owner have entered into a written confidential
`
`settlement agreement that fully resolves all underlying disputes between the
`
`parties, including IPR2016-01060 against U.S. Patent 8,933,945 (the
`
`“Settlement Agreement”). The Parties are concurrently filing a copy of the
`
`Settlement Agreement as EX1017 along with a request to treat it as
`
`confidential business information pursuant to 37 C.F.R. § 42.74(c) and 35
`
`U.S.C. § 317(b). The undersigned represents that there are no other
`
`agreements, oral or written, between the parties made in connection with, or
`
`in contemplation of, the termination of the present proceeding and that
`
`EX1017 represents a true and accurate copy of the agreement between the
`
`parties that resolves the present proceeding.
`
`On October 4, 2016, the Parties informed the Board of the settlement
`
`and requested authorization to file a joint motion to terminate the proceeding
`
`with respect to both the Patent Owner and the Petitioner. As set forth in an e-
`
`mail dated October 5, 2016, the Board authorized the filing of the requested
`
`joint motion to terminate this proceeding as to both parties. Accordingly,
`
`
`
`IPR2016-01060
`Patent 8,933,945
`Petitioner and Patent Owner jointly request termination of the present
`
`proceeding.
`
`Public policy favors terminating the present inter partes review
`
`proceeding. Congress and federal courts have expressed a strong interest in
`
`encouraging settlement in litigation. See, e.g., Delta Air Lines, Inc. v.
`
`August, 450 U.S. 346, 352 (1981) (“The purpose of [Fed. R. Civ. P.] 68 is to
`
`encourage the settlement of litigation.”); Bergh v. Dept. of Transp., 794 F.2d
`
`1575, 1577 (Fed. Cir. 1986) (“The law favors settlement of cases.”), cert.
`
`denied, 479 U.S. 950 (1986). The Federal Circuit places a particularly strong
`
`emphasis on settlement. See Cheyenne River Sioux Tribe v. U.S., 806 F.2d
`
`1046, 1050 (Fed. Cir. 1986) (noting that the law favors settlement to reduce
`
`antagonism and hostility between parties). And, the Board’s Trial Practice
`
`Guide stresses that “[t]here are strong public policy reasons to favor
`
`settlement between the parties to a proceeding.” Office Patent Trial Practice
`
`Guide, 77 Fed. Reg. 48,756, 46,768 (Aug. 14, 2012).
`
`Ending this IPR early promotes the Congressional goal of establishing
`
`a more
`
`efficient patent
`
`system by
`
`limiting unnecessary
`
`and
`
`counterproductive costs. See Changes to Implement Inter Partes Review
`
`Proceedings, Post-Grant Review Proceedings, and Transitional Program for
`
`Covered Business Method Patents, 77 Fed. Reg. 48,680 (Aug. 14, 2012).
`
`
`
`IPR2016-01060
`Patent 8,933,945
`Permitting termination as to all parties provides certainty and fosters an
`
`environment that promotes settlements, creating a timely, cost-effective
`
`alternative to litigation.
`
`Additionally, termination of this IPR is appropriate as the Board has
`
`not yet “decided the merits of the proceeding.” See, e.g., Office Patent Trial
`
`Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). Unified filed its
`
`petition for inter partes review on July 22, 2015. AST filed a preliminary
`
`response prior to institution August 23, 2016. The Board has not yet
`
`instituted any of these proceedings on any grounds or claims, and no
`
`motions or petitions are currently outstanding. The parties have now settled
`
`their dispute, and have reached agreement to terminate this inter partes
`
`review. The USPTO can conserve its resources through terminating the
`
`proceedings now, removing the need for the Board to further consider the
`
`arguments, to issue an Institution Decision, and to render a Final Decision.
`
`Furthermore, no other party’s rights will be prejudiced by the termination of
`
`this proceeding.
`
`Lastly, in accordance with the guidelines suggested by a Board panel
`
`in Heartland Tanning, Inc. v. Sunless, Inc., the parties hereby identify, and
`
`set forth the status of, all other related litigation involving U.S. Patent No.
`
`8,933,945. See IPR2014-00018, Paper No. 26, at *2 (P.T.A.B. July 28,
`
`
`
`IPR2016-01060
`Patent 8,933,945
`
`2014).
`
`
`
`In Certain Computing or Graphics Systems, Components Thereof, and
`
`Vehicles Containing Same, Inv. No. 337-TA-984, U.S. Patent No. 8,933,
`
`945 was asserted against respondents Harman International Industries
`
`Incorporated, et al., FUJITSU TEN LIMITED, et al., Texas Instruments
`
`Incorporated, Renesas Electronics Corporation, et al., NVIDIA Corporation,
`
`Bayerische Motoren Werke AG, et al., Honda Motor Co., Ltd., et al., Toyota
`
`Motor Company, et al, and Volkswagen AG, et al. Respondents NVIDIA
`
`and Texas Instruments have been terminated from the ITC investigation.
`
`The presiding ALJ has issued an initial determination to terminate
`
`respondents Harman, Bayerische Motoren Werke, and Toyota. Joint motions
`
`are pending to terminate all other respondents Fujitsu-Ten, Renesas, and
`
`Honda.
`
`
`
`The status of all related district court litigation involving U.S. Patent
`
`8,933,945 follows:
`
`Case Caption
`
`Current Status
`
`Dismissed without prejudice.
`
`Advanced Silicon Technologies LLC
`v. Harman International Industries
`Incorporated, et al., C.A. No. 1:15-
`1173-RGA, United States
`cv-
`District Court for the District of
`Delaware (filed on December 21,
`2015)
`Advanced Silicon Technologies LLC Dismissed with prejudice.
`
`
`
`Case Caption
`
`v. FUJITSU TEN LIMITED, C.A.
`1:15-cv-1174-RGA, United
`No.
`States District Court for the District
`of Delaware (filed on December 21,
`2015)
`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)
`Advanced Silicon Technologies LLC
`v. Renesas Electronics Corporation,
`et al., C.A. No. 1:15-cv-1176-RGA,
`United States District Court for the
`(filed on
`District of Delaware
`December 21, 2015)
`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)
`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)
`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
`(filed on
`District of Delaware
`December 21, 2015)
`Advanced Silicon Technologies LLC
`v. Toyota Motor Corporation, et al.,
`
`IPR2016-01060
`Patent 8,933,945
`Current Status
`
`Dismissed with prejudice.
`
`Dismissed with prejudice.
`
`Dismissed with prejudice.
`
`Dismissed without prejudice.
`
`Dismissed with prejudice.
`
`Dismissed without prejudice.
`
`
`
`IPR2016-01060
`Patent 8,933,945
`Current Status
`
`Dismissed with prejudice.
`
`Case Caption
`
`C.A. No. 1: 15-cv-1180-RGA,
`United States District Court for the
`District of Delaware
`(filed on
`December 21, 2015)
`Advanced Silicon Technologies LLC
`v. Volkswagen AG, et al., C.A. No. 1:
`15-cv-1181-RGA, United States
`District Court for the District of
`Delaware (filed on December 21,
`2015)
`
`Further, the status of all related Inter Partes review proceedings for
`
`U.S. Patent 8,933,945 is as follows:
`
`Case Caption
`
`Current Status
`
`IPR2016-01108 – Texas Instruments
`Incorporated v. Advanced Silicon
`Technologies LLC
`–
`Volkswagen
`IPR2016-00894
`Group of America, Inc. v. Advanced
`Silicon Technologies LLC
`
`Terminated.
`
`Terminated.
`
`Therefore, Unified and Advanced Silicon Technologies LLC
`
`respectfully request termination of the Inter Partes Review IPR2016-01060
`
`of U.S. Patent 8,933,945.
`
`Date: October 6, 2016
`
`p
`y
`,
` Respectfully submitted,
`
`___________________
`___________________________
`
`Jonathan Stroud, Reg. No. 72,518
`Chief Patent Counsel
`Unified Patents Inc.
`
`
`
`IPR2016-01060
`Patent 8,933,945
`
`/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
`
`
`
`
`
`
`
`IPR2016-01060
`Patent 8,933,945
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Joint Motion
`
`to Terminate the Proceeding for Inter Partes Review of U.S. Patent
`
`8,933,945 was served on October 6, 2016 via electronic mail directed to the
`
`attorney of
`
`record
`
`for
`
`the
`
`patent at
`
`the
`
`following addresses:
`
`arizk@mintz.com, mtrenaud@mintz.com, and WAMeunier@mintz.com.
`
`Patent Owner has consented to electronic service.
`
`Date: October 6, 2016
`
` Respectfully submitted,
`
`____________________
`___________________________
`
`Jonathan Stroud, Reg. No. 72,518
`Unified Patents Inc.
`1875 Connecticut Ave. NW, Floor 10
`Washington, D.C., 20009
`Tel: (202) 805-8931
`Email: jonathan@unifiedpatents.com
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