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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`TEXAS INSTRUMENTS INCORPORATED,
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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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`Case No. IPR2016—01108
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`Patent No. 8,933,945
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`
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`JOINT MOTION TO TERMINATE PURSUANT TO
`35 U.S.C. § 317 AND 37 C.F.R. § 42.74
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`
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`IPR2016—01 108
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`Pursuant to 35 U.S.C. § 317, 37 C.F.R. §§ 42.72 and 42.74, and the Board’s
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`authorization of July 28, 2016, Petitioner Texas Instruments Incorporated and
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`Patent Owner Advanced Silicon Technologies LLC jointly move to terminate the
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`present inter partes review proceeding in light of the parties’ settlement of their
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`dispute insofar as it relates to U.S. Patent No. 8,933,945 (“the ’945 patent”). The
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`parties are filing, concurrently herewith, a true and complete copy of their written
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`Settlement and License Agreement (“Settlement Agreement”) (Confidential
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`Exhibit 1013) in connection with this matter as required by the statute. The
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`Settlement Agreement completely settles the parties’ controversy and their dispute
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`relating to the ’945 patent as between Patent Owner and Texas Instruments
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`Incorporated, the Petitioner and real party—in—interest in the present proceeding,
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`who was named as a defendant in the U.S. district court litigation captioned
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`Advanced Silicon Technologies LLC V. Texas Instruments Incorporated, C.A. No.
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`1:15-cv—l175-RGA (D. Del.) and as a repondent in an investigation before the U.S.
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`International Trade Commission (ITC) captioned Certain Computing or Graphics
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`Systems, Components Thereof and Vehicles Containing Same; Investigation No.
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`337~TA-984 (“ITC Investigation”). In the ITC Investigation, the parties filed a
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`
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`lPR2016-01108
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`Joint Motion to Terminate Investigation and Stay the Procedural Schedule as to
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`Respondent Texas Instruments Based on Settlement on July 26, 2016 (Exhibit
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`1014),] and will file a Stipulation or Notice or Dismissal in the district court
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`litigation within two (2) business days after receipt of consideration (see
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`Settlement Agreement (Confidential Exhibit 1013), para. 2.6.2 and Exhibit C).
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`The parties further jointly certify that there are no other agreements or
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`understandings, oral or written, between Patent Owner and Petitioner, including
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`any collateral agreements, made in connection with, or in contemplation of, the
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`termination of the present proceeding as set forth in 35 U.S.C. § 3 l7(b).
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`The parties request that the Settlement Agreement (Confidential Exhibit
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`1013) be treated as business confidential information and kept separate from the
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`file of the ’945 patent. A joint request to treat the Settlement Agreement as
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`business confidential information kept separate from the file of the involved patent
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`pursuant to 35 U.S.C. § 3l7(b) is being filed concurrently herewith.
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`1 Highly Confidential Exhibit B cited in Exhibit 1014 is the same document
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`as the “Settlement Agreement” cited in this paper as Confidential Exhibit 1013.
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`IPR20l6-01108
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`Termination with Respect to Inter Partes Review Proceeding
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`A joint motion to terminate generally “must (1) include a brief explanation
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`as to why termination is appropriate; (2) identify all parties in any related litigation
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`involving the patents at issue; (3) identify any related proceedings currently before
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`the Office, and (4) discuss specifically the current status of each such related
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`litigation or proceeding with respect to each party to the litigation or proceeding.”
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`Heartland Tanning, Inc. v. Sunless, Inc., IPR2014-00018, Paper No. 26, at *2
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`(P.T.A.B. July 28, 2014). Each element is addressed below:
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`As for requirement (1), termination is appropriate in this proceeding because
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`the parties have settled their dispute with respect to the ’945 patent, and have
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`agreed to terminate this inter partes review. The applicable statute, 35 U.S.C.
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`§ 3l7(a), provides that an inter partes review proceeding “shall be terminated with
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`respect to any petitioner upon the joint request of the petitioner and the patent
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`owner, unless the Office has decided the merits of the proceeding before the
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`request for termination is filed.” In this case, the inter partes review has not yet
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`been instituted. The Patent Owner’s Preliminary Response to the petition has not
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`yet been filed, and the Office has made no decision on the merits. Moreover, as
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`recognized by the rules of practice before the Board:
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`There are strong public policy reasons to favor settlement between the
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`parties to a proceeding. The Board will be available to facilitate
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`settlement discussions,
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`and where appropriate, may require
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`a
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`3
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`lPR20l6-01108
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`settlement discussion as part of the proceeding. The Board expects
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`that a proceeding will
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`terminate after the filing of a settlement
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`agreement, unless the Board has already decided the merits of the
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`proceeding.
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`Patent Office Trial Practice Guide, Fed. Register, Vol. 77, No. 157 at 48768 (Aug.
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`14, 2012). Moreover, no public interest or other factors militate against
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`termination of this proceeding.
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`As for requirements (2) and (4), the table below identifies parties in district
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`court litigations that involve or involved the ’945 patent, and discusses the current
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`status of these related litigations with respect to each party to the litigation. See
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`Heartland Tanning, Inc., Paper No. 26, at *2.
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`Case Caption
`Current Status of Each
`Related Litigation With
`Respect to Each Party to the
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`Liti ation or Proceedin
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`Advanced Silicon Technologies LLC v. Harman
`Administratively closed in view
`of ITC Inv. No. 337—TA—984.
`International Industries Incorporated, et al. ,
`C.A. No. 1:15-cv—ll73—RGA, United States
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`District Court for the District of Delaware (filed
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`on December 21, 2015)
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`Advanced Silicon Technologies LLC v. Texas
`Instruments Incorporated, C.A. No. l:l5—cv-
`1175-RGA, United States District Court for the
`District of Delaware (filed on December 21,
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`Administratively closed in view
`of ITC Inv. No. 337—TA-984.
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`
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`
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`Advanced Silicon Technologies LLC v. Renesas
`Electronics Corporation, et al., C.A. No. l:l5-
`cv-1l76—RGA, United States District Court for
`the District of Delaware (filed on December 21,
`2015)
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`Administratively closed in view
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`of ITC Inv. No. 337—TA—984.
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`IPR2016-01108
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`
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`Case Caption
`Current Status of Each
`Related Litigation With
`Respect to Each Party to the
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`Liti ation or Proceedin
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`Dismissed with prejudice.
`Advanced Silicon Technologies LLC v. NVIDIA
`Corporation, C.A. No. 1:l5~cv-1177-RGA,
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`United States District Court for the District of
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`Administratively closed in View
`ofITC Inv. No. 337—TA-984.
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`
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`Administratively closed in view
`of ITC Inv. No. 337—TA—984.
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`
`
`
`
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`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
`District of Delaware (filed on December 21,
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`
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`Administratively closed in view
`of ITC Inv. No. 337—TA-984.
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`
`
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`Advanced Silicon Technologies LLC v.
`Volkswagen AG, Volkswagen Group ofAmerica,
`Inc, et al. , C.A. No. 1:15-cv—1 l81—RGA, United
`States District Court for the District of Delaware
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`
`
`
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`
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`(filed on December 21, 2015)
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`Also with regard to requirements (2) and (4) of Heartland Tanning, in the
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`ITC Investigation, the ’945 patent was asserted against respondents Harman
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`International Industries Incorporated, et al. , Texas Instruments Incorporated,
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`Renesas Electronics Corporation, et al. , NVIDIA Corporation, Bayerische
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`Motoren Werke AG, et al., Honda Motor Co., Ltd, et al., and Volkswagen AG, et
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`al. Respondent NVIDIA Corporation has been terminated from the ITC
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`Investigation. All other respondents remain in the ITC investigation. See
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`Heartland Tanning, Inc., Paper No. 26, at *2.
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`5
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`IPR20 1 6-01 108
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`As for requirements (3) and (4), the following related Inter Partes Review
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`proceedings for the ’945 patent are currently before the U.S. Patent & Trademark
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`Office:
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`Case Caption
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`
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`Current Status of Each Related Inter
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`Partes Review Proceeding With Respect
`to Each Par
`to the Proceedin
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`pending Board decision on institution
`(petition filed April 15, 2016)
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` pending Board decision on institution
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`(petition filed May 19, 2016)
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`
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`IPR20l6—00894 - Volkswagen Group
`ofAmerica, Inc. v. Advanced Silicon
`Technolo ies LLC
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`IPR2016—0l060 — Unified Patents
`Inc. v. Advanced Silicon
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`
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`Teclznolo ies LLC
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`Finally, as discussed above, the Settlement Agreement fully resolves all
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`litigation and proceedings between the parties to this IPR proceeding relating to the
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`’945 patent. The parties filed a Joint Motion to Terminate Investigation and Stay
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`the Procedural Schedule as to Respondent Texas Instruments Based On Settlement
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`on July 26, 2016 (Exhibit 1014) for ITC Investigation No. 337—TA—984, and will
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`file a Stipulation or Notice or Dismissal in the district court litigation involving
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`Petitioner Texas Instruments Incorporated within two business days after Patent
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`Owner’s receipt of consideration under the Settlement Agreement (see
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`Confidential Exhibit 1013, para. 2.6.2 and Exhibit C).
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`For the foregoing reasons, the parties jointly and respectfully request that the
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`instant proceeding be terminated.
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`Date: July 2 8, 2016
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`Respectfully submitted,
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`IPR2016-01108
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`By
`Gregory S. Discher
`Registration No.: 42,488
`David A. Garr
`
`
`
`Registration No. 74,932
`COVINGTON & BURLING LLP
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`One CityCenter, 850 Tenth Street, NW
`Washington, DC 20001
`(202) 662-6000
`Attorneys for Petitioner
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`By /William A. Meunier/
`William A. Meunier
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`Registration No.: 41,193
`MINTZ, LEVIN, COHN, FERRIS,
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`GLOVSKY AND POPEO, P.C.
`One Financial Center
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`Boston, MA 02111
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`Telephone: (617) 348-1615
`Attorneys for Patent Owner
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`
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`CERTIFICATE OF SERVICE
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`IPR20l6-01108
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`Pursuant to 37 C.F.R. § 42.6, I hereby certify that on this 28th day of July
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`2016, the foregoing Joint Motion to Terminate Pursuant to 35 U.S.C. § 317 and 37
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`C.F.R. § 42.74, was served via email by agreement of the parties on the following
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`counsel of record for Patent Owner:
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`William A. Meunier
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`Michael T. Renaud
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`Adam S. Rizk
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`MINTZ, LEVIN, COHN, FERRIS,
`GLOVSKY & POPEO P.C.
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`One Financial Center
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`Boston, MA 02111
`AdSi1TechIPRs@1nintz.com
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`Date: July 28, 2016
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`Registration No.: 74,932