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`Paper No.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________________
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`APPLE INC.,
`Petitioner,
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`v.
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`PARTHENON UNIFIED MEMORY ARCHITECTURE LLC,
`Patent Owner
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`_____________________
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`
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`Case IPR2016-01134
`Patent No. 7,542,045
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`_____________________
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`JOINT MOTION TO TERMINATE UNDER 37 C.F.R. § 42.72
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`Joint Motion to Terminate
`IPR2016-01134 (Patent No. 7,542,045)
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`Petitioner Apple Inc., (“Apple”) and Patent Owner Parthenon Unified
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`Memory Architecture LLC (“PUMA”) (collectively, the “Parties”), pursuant to
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`authorization provided by the Board’s Order – Conduct of the Proceedings entered
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`March 1, 2017 (Paper 28) following the conference call held February 27, 2017, 35
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`U.S.C. §§ 315(d), 317, and 37 C.F.R. § 42.72, jointly request termination of this
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`inter partes review proceeding as moot. The instant motion is filed in lieu of a
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`response to the Board’s Order to Show Cause issued February 22, 2017. Ex. 1020,
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`14:8-13.
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`1. Statement of Facts
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`On June 2, 2016, Petitioner filed a Petition requesting inter partes review of
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`claims 1, 4, 5, 7, 9, 10, 12, and 15-17 of U.S. Patent No. 7,542,045 (“the ’045
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`Patent”) (IPR2016-01134). On December 8, 2016, the Board instituted inter
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`partes review as to all challenged claims (Paper 7). DUE DATE 1 (March 9,
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`2017) has passed and Patent Owner certifies that it has not filed (and will not file)
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`a Response in IPR2016-01134 contesting the instituted grounds.
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`Claims 1, 2, 4-7, 9, 10, 12, 13, and 15-17 of the ’045 Patent were held
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`unpatentable in the Final Written Decision in HTC Corp. v. Parthenon Unified
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`Memory Architecture LLC, Case IPR2015-1502 (PTAB Jan. 4, 2017) (Paper 52)
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`(“1502 FWD”). Patent Owner confirmed that it did not intend to appeal the 1502
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`FWD (Ex. 1020, 8:23-25), the time for such appeal expired March 8, 2017, and
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`-1-
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`
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`Joint Motion to Terminate
`IPR2016-01134 (Patent No. 7,542,045)
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`Patent Owner hereby certifies that no Notice of Appeal has been or will be filed
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`relative to the 1502 FWD.
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`2. Relief Requested
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`Relative to the 1502 FWD, Patent Owner’s time for noticing an appeal to the
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`Court of Appeals for the Federal Circuit expired March 8, 2017, and Patent Owner
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`certifies that it has not filed (and will not file) a notice of appeal of the 1502 FWD.
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`35 USC §§ 141-142, 319; 37 CFR § 90.3. Thus, because a final written decision
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`determining all of challenged claims 1, 4, 5, 7, 9, 10, 12, and 15-17 to be
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`unpatentable has issued, and because the time for appeal has expired, pursuant to
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`35 USC § 318, “the Director shall issue and publish a certificate canceling” the
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`challenged claims of the ’045 Patent. 35 USC § 318(a, b). When that certificate
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`issues in due course based on the now-final determination of the 1502 FWD,
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`claims 1, 4, 5, 7, 9, 10, 12, and 15-17 will no longer be patent claims of the ’045
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`Patent and, relative to this proceeding, the Board will no longer be able to issue a
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`“final written decision with respect to the patentability of any patent claim
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`challenged by the petitioner.” 35 USC § 318(a) (emphasis added). Because the
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`Director must issue the certificate, this proceeding is now moot and should be
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`terminated as such.
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`The Board has previously followed this very course of action, terminating an
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`inter partes review as moot where that review challenged claims that were finally
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`-2-
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`
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`Joint Motion to Terminate
`IPR2016-01134 (Patent No. 7,542,045)
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`determined to be unpatentable in a previously-issued final written decision. See
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`International Business Machines Corp. v. Intellectual Ventures II LLC, Case
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`IPR2015-01322 (PTAB Apr. 7, 2016) (Paper 22). The Board based its decision (in
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`part) on the additional fact that the time for appeal of the earlier final written
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`decision had lapsed. The same course of action is appropriate here, as Patent
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`Owner’s time for appeal of the 1502 FWD has expired and the claims challenged
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`in the instant proceeding have been finally determined to be unpatentable. The
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`Board’s authority to terminate can be found in 35 USC § 315(d) or § 317.
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`For avoidance of doubt, Petitioner respectfully submits that vacating the
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`Decision to Institute is not appropriate. See Ex. 1020, 10:3-12:4. The Board has
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`previously vacated an institution decision in very limited circumstances (e.g., no
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`jurisdiction to review patent, defective petition, or misapprehension of claim
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`dependency). None of those circumstances exist here, and accordingly, Petitioner
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`respectfully submits that, while termination of this proceeding as moot is
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`appropriate for the reasons set forth above, vacating the present Decision to
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`Institute is not warranted.
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`Because the challenged claims have already been finally determined to be
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`unpatentable, any decision the Board might reach in this proceeding regarding
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`those claims would be moot and purely advisory. The Parties therefore
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`respectfully request that the Board terminate the present proceeding as moot.
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`-3-
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`Respectfully submitted,
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`Joint Motion to Terminate
`IPR2016-01134 (Patent No. 7,542,045)
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`Masood Anjom
`Registration No. 62,167
`Counsel for Patent Owner
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`/David W. OBrien/
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`David W. O’Brien
`Registration No. 40,107
`Counsel for Petitioner
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`Dated: March 10, 2017
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`-4-
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`Joint Motion to Terminate
`IPR2016-01134 (Patent No. 7,542,045)
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(a), this is to certify that I
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`caused to be served a true and correct copy of the foregoing “Joint Motion to
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`Terminate” as detailed below:
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`Date of service March 10, 2017
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`Manner of service Electronic Mail to: manjom@azalaw.com
`aalavi@azalaw.com; sclark@azalaw.com; and
`mmcbride@azalaw.com
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`Documents served Joint Motion to Terminate
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`Masood Anjom
`Amir Alavi
`Scott Clark
`Michael McBride
`AHMAD, ZAVITSANOS, ANAIPAKOS, ALAVI &
`MENSING P.C.
`1221 McKinney, Suite 2500
`Houston, TX 77010
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`Persons served
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`/David W. OBrien/
`David W. O’Brien
`Registration No. 40,107
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`-5-
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