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