Paper No. 45
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––––––––––
`
`HTC CORPORATION and HTC AMERICA, INC.,
`Petitioners,
`
`v.
`
`PARTHENON UNIFIED MEMORY ARCHITECTURE LLC,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR2016-011351
`U.S. Patent No. 5,812,789
`
`––––––––––––––––––
`
`JOINT MOTION TO TERMINATE PROCEEDING
`
`
`
`1 Case IPR2017-00512 has been joined with this proceeding.
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––––––––––
`
`HTC CORPORATION and HTC AMERICA, INC.,
`Petitioners,
`
`v.
`
`PARTHENON UNIFIED MEMORY ARCHITECTURE LLC,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR2016-011351
`U.S. Patent No. 5,812,789
`
`––––––––––––––––––
`
`JOINT MOTION TO TERMINATE PROCEEDING
`
`
`
`1 Case IPR2017-00512 has been joined with this proceeding.
`
`
`
`
`
`No.|Exhibit Description
`U.S. Patent No. 5,812,789
`
`1001
`
`1002
`
`1003
`
`Prosecution History of U.S. Patent No. 5,812,789
`
`Declaration of Robert Colwell, Ph.D., Under 37 C.F.R. § 1.68
`
`1004
`
`Curriculum Vitae of Robert Colwell, Ph.D.
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`U.S. Patent No. 5,546,547 to Bowesetal. (“Bowes”’)
`
`Texas Instruments, Inc., Houston, TX, “TMS320C8x System Level
`Synopsis,” (September 1995) (Literature Ref. SPRU113) (“TMS”)
`
`U.S. Patent No. 5, 001,625 to Thomasetal. (“Thomas”’)
`
`R. Gove, “The MVP:A Highly-Integrated Video Compression Chip”,
`IEEE 1994 (“Gove”)
`
`U.S. Patent No. 5,768,533 to Ran (“Ran”)
`
`U.S. Patent No. 5,742,797 to Celi et al. (“Celi”)
`
`Joint Claim Construction and Prehearing Statement, Parthenon Unified
`Memory Architecture LLC v. Apple Inc., case no. 2:15-cv-632-JRG-
`RSP (Feb. 16, 2016, E.D. Tex.)
`
`Decision ofInstitution of Inter Partes Review, Samsung Elec. Co., Ltd.,
`et al. v. Parthenon Unified Memory Architecture LLC, IPR2015-01944
`(Paper No. 7)
`
`Claim Construction Memorandum Opinion and Order, Parthenon
`Unified Memory Architecture LLC v. ZTE Corp.et al., No. 2:15-CV-
`00225 (E.D. Tex.)
`
`Claim Construction Memorandum Opinion and Order, Parthenon
`Unified Memory Architecture LLC v. SamsungElecs. Co. Ltd.etal.,
`No. 2:14-CV-00902 (E.D. Tex.)
`
`Claim Construction Memorandum Opinion and Order, Parthenon
`Unified Memory Architecture LLC v. HTC Corp.et al., 2:14-CV-00690
`(E.D. Tex.)
`
`Claim Construction Memorandum Opinion and Order, ST
`Microelectronics, Inc. v. Motorola, Inc. et al., No. 4:03-CV-00276 (E.D.
`Tex.)
`
`
`
`IPR2016-01135
`
`Joint Motion to Terminate Proceeding
`
`PETITIONERS’ EXHIBIT LIST
`
`
`
`
`
`IPR2016-01135
`
`Joint Motion to Terminate Proceeding
`
`1017
`
`“Pentium and Pentium Pro Processors and Related Products,” ISBN 1-
`55512-265-5
`1018 Parthenon Unified Memory Architecture LLC v. Apple Inc., case no.
`2:15-cv-632-JRG-RSP, Document No. 10 (June 16, 2015, E.D. Tex.)
`1019 Texas Instruments, Inc., Houston, TX, “TMS320C80 to TMS320C82
`Software Compatibility, User’s Guide,” (November 1995) (Literature
`Ref. SPRU154)
`1020 Bader Declaration (including Appendix A)
`1021 Declaration of Yakov Zolotorev in Support of Motion for Pro Hac Vice
`Admission
`1022 Deposition Transcript of Dr. Mitchell A. Thornton
`1023
`Joint Stipulation And Motion To Dismiss (Sept. 13, 2017)
`1024 Apple-PUMA Settlement Agreement (Board Only)
`1025 Declaration of Curt Holbreich in Support of Motion for Pro Hac Vice
`Admission
`HTC-PUMA Written Agreement (Oct. 4, 2017)
`
`1026
`NEW
`
`ii
`
`
`
`IPR2016-01135
`
`I.
`
`Introduction
`
`Joint Motion to Terminate Proceeding
`
`Petitioners HTC Corporation and HTC America, Inc. (“Petitioners”) and
`
`Patent Owner Parthenon Unified Memory Architecture LLC (“Patent Owner”)
`
`(collectively the “Parties”) have resolved their dispute with respect to claims 2, 7,
`
`8, 12, and 14 of U.S. Patent No. 5,812,789 (“’789 patent”), the only claims that
`
`remain at issue in this proceeding. The Parties therefore jointly request termination
`
`of this inter partes review proceeding. The Board authorized the filing of this
`
`motion via email on October 5, 2017.
`
`II.
`
`Statement of Facts
`
`On or about June 12, 2014, Patent Owner filed Civil Action No. 2:14-cv-
`
`00690 in the U.S. District Court for the Eastern District of Texas, against
`
`Petitioners, asserting infringement of the ’789 patent (“Civil Action”). On August
`
`23, 2016, the Board instituted an inter partes review of claims 1, 3-6, 11, and 13,
`
`originally requested by Apple Inc. See IPR2016-00923, Paper 10. On December
`
`6, 2016, the Board instituted an inter partes review of claims 1-8 and 11-14 in this
`
`proceeding, also originally requested by Apple Inc. See Paper 7. Petitioners were
`
`joined to each proceeding after institution.
`
`On August 4, 2017, the Board issued a Final Written Decision in IPR2016-
`
`00923 (“’923 FWD”), which found claims 1, 3-6, 11, and 13 of the ’789 patent to
`
`be unpatentable. IPR2016-00923, Paper 39 at 44. On September 22, 2017, the
`
`1
`
`
`
`IPR2016-01135
`
`Joint Motion to Terminate Proceeding
`
`Board vacated the Institution Decision in this proceeding with respect to claims 1,
`
`3-6, 11, and 13 in light of the ’923 FWD. Paper 43 at 11. As a result, claims 2, 7,
`
`8, 12, and 14 are the only ones that remain at issue in this proceeding. Id.
`
`Claims 2, 7, 8, 12, and 14, however, are not and have never been asserted by
`
`Patent Owner against Petitioners in the Civil Action. On October 4, 2017, the
`
`Parties executed a written agreement to resolve the Parties’ disputes with respect to
`
`claims 2, 7, 8, 12, and 14. In short, the Parties have agreed to request termination
`
`of this proceeding and Patent Owner has agreed to grant Petitioners a covenant-
`
`not-to-sue on claims 2, 7, 8, 12, and 14 of the ’789 patent. Pursuant to 37 C.F.R. §
`
`42.74(b), the Parties’ agreement is in writing, and a true and correct copy is being
`
`filed as Exhibit 1026.
`
`The Parties’ written agreement does not resolve the Parties’ dispute with
`
`respect to claims 1, 3-6, 11, and 13 of the ’789 patent, the claims found
`
`unpatentable in the ’923 FWD. See Ex. 1026. On September 28, 2017, Patent
`
`Owner filed a notice of appeal of the ’923 FWD, IPR2016-00923, Paper 40, which
`
`was recently docketed by the Court of Appeals for the Federal Circuit. See Appeal
`
`No. 17-2635 (Fed. Cir.). This appeal remains ongoing.
`
`The Parties certify that there are no collateral agreements or understandings
`
`made in connection with, or in contemplation of, the termination of the inter partes
`
`review.
`
`2
`
`
`
`IPR2016-01135
`
`Joint Motion to Terminate Proceeding
`
`III. Relief Requested
`
`Termination of this inter partes review is requested, and the Parties
`
`respectfully submit that such termination is justified. Section 317(a) of 35 U.S.C.
`
`provides that an inter partes review “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.” Here, the oral argument has not yet occurred and the Board has not
`
`decided the merits of the proceeding. Because the Board has not decided the
`
`merits of the present inter partes review, this proceeding should be terminated.
`
`The Board has granted joint motions to terminate proceedings in similar
`
`postures, including after oral argument. For example, in Rackspace Hosting v.
`
`Clouding IP, the Board granted a motion to terminate a proceeding after the
`
`evidentiary record was closed and shortly before the oral argument. Rackspace
`
`Hosting, Inc. v. Clouding IP, LLC, CBM2014-00034, Paper Paper 28 at 2-3 (PTAB
`
`Dec. 9, 2014); id., Paper 22 at 2. In Apex v. Resmed, the matter was fully briefed
`
`when the parties filed their joint motion to terminate. Apex Medical Corp. v.
`
`Resmed Ltd., IPR2013-00512, Paper 39 at 2-3 (PTAB Sept. 12, 2014). There, the
`
`Board granted the motion to terminate, noting that it had not yet decided the
`
`merits. Id. In Apple. v. Nagravision, the Board terminated the proceeding even
`
`3
`
`
`
`IPR2016-01135
`
`Joint Motion to Terminate Proceeding
`
`after oral argument had already been conducted. Apple Inc. v. Nagravision SA,
`
`Case IPR2015-00971, Paper 30 at 2-3 (PTAB Sept. 7, 2016).
`
`Termination would save significant further expenditure of resources by the
`
`Parties and the Board, and would further the purpose of inter partes review
`
`proceedings of providing an efficient and less costly alternative forum for patent
`
`disputes. Further, maintaining the proceeding would discourage further
`
`settlements, as patent owners in similar situations would have a strong disincentive
`
`to settle if they perceived that an inter partes review would continue regardless of
`
`a settlement.
`
`Indeed, the Board’s Practice Guide explains “[t]here are strong public policy
`
`reasons to favor settlement between the parties to a 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. 35
`
`U.S.C. 317(a), as amended….” Office Patent Trial Practice Guide, 77 Fed. Reg.
`
`48,756, 48,768 (Aug. 14, 2012) (emphasis added). The Board’s expectation that
`
`such proceedings should be terminated is proper and well justified here. In light of
`
`the foregoing, termination of this proceeding is respectfully requested.
`
`IV. Status of Related Proceedings
`
`The following dismissed or terminated proceedings involved the ’789 patent:
`
`4
`
`
`
`IPR2016-01135
`
`Joint Motion to Terminate Proceeding
`
`• STMicroelectronics v. Motorola Inc., Case No. 4-03-cv-00276 (E.D.
`
`Tex. July 18, 2003)
`
`• Parthenon Unified Memory Architecture LLC v. Huawei Technologies
`
`Co., Ltd. et al, Case No. 2-14-cv-00687 (E.D. Tex. June 12, 2014)
`
`• Parthenon Unified Memory Architecture LLC v. Motorola Mobility,
`
`Inc., Case No. 2-14-cv-00689 (E.D. Tex. June 12, 2014)
`
`• Parthenon Unified Memory Architecture LLC v. LG Electronics, Inc.
`
`et al., Case No. 2-14-cv-00691 (E.D. Tex. June 12, 2014)
`
`• Parthenon Unified Memory Architecture LLC v. Samsung Electronics
`
`Co., Ltd. et al, Case No. 2-14-cv-00902 (E.D. Tex. Sept. 22, 2014)
`
`• Parthenon Unified Memory Architecture LLC v. Qualcomm
`
`Incorporated et al, 2-14-cv-00930, Case No. (E.D. Tex. Oct. 1, 2014)
`
`• Parthenon Unified Memory Architecture LLC v. ZTE Corporation et
`
`al, Case No. 2-15-cv-00225 (E.D. Tex. Feb. 17, 2015)
`
`• Parthenon Unified Memory Architecture LLC v. Apple Inc., Case No.
`
`2-15-cv-00621 (E.D. Tex. May 1, 2015)
`
`• Samsung Electronics Co., Ltd. v. Parthenon Unified Memory
`
`Architecture LLC, IPR2015-01944 (PTAB Sept. 22, 2015
`
`5
`
`
`
`IPR2016-01135
`
`Joint Motion to Terminate Proceeding
`
`• Parthenon Unified Memory Architecture LLC v. LG Electronics
`
`MobileComm, U.S.A., Case No. 2-15-cv-01950 (E.D. Tex. Nov. 30,
`
`2015)
`
`• ZTE USA Inc. v. Parthenon Unified Memory Architecture LLC,
`
`IPR2016-00664 (PTAB Feb. 26, 2016)
`
`• Parthenon Unified Memory Architecture LLC v. Apple Inc., Case No.
`
`2-16-cv-01098 (E.D. Tex. Oct. 5, 2016)
`
`The following proceedings involve the ’789 patent:
`
`• Parthenon Unified Memory Architecture LLC v. HTC Corporation et
`
`al, Case No. 2-14-cv-00690 (E.D. Tex. June 12, 2014)
`
`• HTC Corporation v. Parthenon Unified Memory Architecture LLC,
`
`IPR2016-00847 (PTAB April 7, 2016); Appeal No. 17-2635 (Fed.
`
`Cir.)
`
`• Apple Inc. v. Parthenon Unified Memory Architecture LLC, IPR2016-
`
`00923 (PTAB April 20, 2016); Appeal No. 17-2635 (Fed. Cir.)
`
`• Apple Inc. v. Parthenon Unified Memory Architecture LLC, IPR2016-
`
`01135 (PTAB June 2, 2016)
`
`• HTC Corporation v. Parthenon Unified Memory Architecture LLC,
`
`IPR2017-00512 (PTAB Jan. 5, 2017)
`
`6
`
`
`
`IPR2016-01135
`
`Joint Motion to Terminate Proceeding
`
`Patent Owner confirms that no other litigation or proceeding involving the
`
`subject patent is contemplated in the foreseeable future, with the exception of the
`
`Parties’ pending dispute with respect to claim 1, 3-6, 11 and 13 of the ’789 patent,
`
`which are subject to Appeal No. 17-2635 (Fed. Cir.), following the Board’s finding
`
`that these claims are unpatentable in Final Written Decision IPR2016-00923.
`
`V. Conclusion
`
`For these reasons, the Parties jointly request termination of this proceeding.
`
`Dated: October 6, 2017
`
`Respectfully Submitted,
`
`/Masood Anjom/
`Masood Anjom
`Reg. No. 62,167
`Counsel for Patent Owner
`
`/Joseph A. Micallef/
`Joseph A. Micallef
`Reg. No. 39,772
`Counsel for Petitioners
`
`7
`
`
`
`IPR2016-01135
`
`Joint Motion to Terminate Proceeding
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that on this 6th day of
`
`October, 2017, I caused to be served a true and correct copy of the foregoing and
`
`any accompanying exhibits by electronic mail on the following counsel:
`
`Masood Anjom, manjom@azalaw.com
`Amir Alavi, aalavi@azalaw.com
`Scott Clark, sclark@azalaw.com
`Michael McBride, mmcbride@azalaw.com
`Justin Chen, jchen@azalaw.com
`Gregory J. Gonsalves, gonsalves@gonsalveslawfirm.com
`
`
`
`Dated: October 6, 2017
`
`Respectfully Submitted,
`
`
`
`/Joseph Micallef/
`Joseph A. Micallef
`Reg. No. 39,772
`SIDLEY AUSTIN LLP
`1501 K Street NW
`Washington, DC 20005
`jmicallef@sidley.com
`(202) 736-8914
`Attorney for Petitioners HTC
`Corporation and HTC America, Inc.
`
`1
`
`
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