UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`META PLATFORMS, INC.
`Petitioner
`
`v.
`
`THALES VISIONIX, INC.
`Patent Owner
`
`U.S. PATENT NO. 6,922,632
`
`IPR2022-01304
`_________________________________________________
`
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317(a)
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`META PLATFORMS, INC.
`Petitioner
`
`v.
`
`THALES VISIONIX, INC.
`Patent Owner
`
`U.S. PATENT NO. 6,922,632
`
`IPR2022-01304
`_________________________________________________
`
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317(a)
`
`
`
`Joint Motion to Terminate
`IPR2022-01304
`
`Petitioner Meta Platforms, Inc. (“Petitioner”) and patent owner Thales
`
`Visionix, Inc. (“Patent Owner”) (collectively, the “Parties”) jointly request to
`
`terminate IPR2022-01304 under 35 U.S.C. § 317(a). The Board authorized the filing
`
`of this motion on January 16, 2024.
`
`I.
`
`BACKGROUND
`
`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 26 at 2 (P.T.A.B.
`
`July 28, 2014). Each of these background issues is discussed below in turn.
`
`(1) Brief Explanation
`
`Real party-in-interest Gentex Corporation (“Gentex”), which was the
`
`exclusive licensee of the patent at issue in this proceeding within certain relevant
`
`fields of use, and Petitioner have entered into a Patent License And Settlement
`
`Agreement (the “Meta-Gentex Agreement”).1
`
`
`1 The Parties are filing the Meta-Gentex Agreement concurrently with this joint
`motion as Exhibit 1042, along with a “Joint Request to File Document as
`Business Confidential Information.” See Exhibit 1042. Petitioner’s Updated
`
`
`
`1
`
`
`
`Joint Motion to Terminate
`IPR2022-01304
`
`Patent Owner is not a party to the Meta-Gentex Agreement. Patent Owner
`
`disputes the enforceability of a Term Sheet mentioned and referenced in the Meta-
`
`Gentex Agreement, while Petitioner contends that the Term Sheet is enforceable and
`
`binding on Patent Owner. However, this dispute is not pertinent to this IPR and
`
`should not affect its termination.
`
`Patent Owner and Petitioner both believe that this proceeding should be
`
`terminated. No Final Written Decision is expected in this proceeding for
`
`approximately two more months.
`
`(2) Related Litigation
`
`Gentex and Indigo Technologies, LLC (collectively, the “Voluntary
`
`Plaintiffs”) asserted the patent at issue in this proceeding in Gentex Corporation et
`
`al. v. Meta Platforms, Inc. et al., No. 6:21-cv-00755-ADA (W.D. Tex.), which was
`
`transferred to the Northern District of California, No. 4:22-cv-03892-YGR. Patent
`
`Owner was named as an involuntary plaintiff in that proceeding. On January 12,
`
`2024, the Voluntary Plaintiffs and Petitioner filed a joint motion to dismiss this
`
`district court litigation.
`
`There are no other litigations pending related to the patent at issue in this
`
`proceeding.
`
`
`Exhibit List, which includes this document, is appended as Appendix A to this
`document.
`
`2
`
`
`
`(3) Related Proceedings Before the Office
`
`Joint Motion to Terminate
`IPR2022-01304
`
`
`The following IPRs between the same Parties have also been instituted and
`
`relate to patents that were also asserted in the same district court litigation referenced
`
`above:
`
`IPR2022-01294,
`
`IPR2022-01298,
`
`IPR2022-01301,
`
`IPR2022-01302,
`
`IPR2022-01303, IPR2022-01305, and IPR2022-01308.
`
`(4) Status of Related Litigation and Proceedings Before the Office
`
`As noted above, the Voluntary Plaintiffs and Petitioner have filed a joint
`
`motion to dismiss the district court litigation.
`
`The Parties are jointly moving to terminate all of the IPRs referenced above.
`
`II.
`
`STATEMENT OF RELIEF REQUESTED
`
`Under § 317(a), 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.” The Parties jointly request termination of this IPR2022-01304, and the
`
`Office has not decided the merits of this IPR proceeding. There are no other
`
`preconditions of § 317(a). Therefore, the Parties have met the statutory requirement
`
`to terminate the proceeding before the Office has decided the merits of the
`
`proceeding, and good cause exists to terminate this proceeding. See 35 U.S.C. §
`
`317(a).
`
`
`
`3
`
`
`
`III. CONCLUSION
`
`Joint Motion to Terminate
`IPR2022-01304
`
`
`For these reasons, the Parties respectfully request termination of this IPR.
`
`
`
`Date: January 17, 2024
`
`
`
`
`
`Respectfully submitted,
`
`
`/W. Todd Baker/
`W. Todd Baker (No. 45,265)
`todd.baker@kirkland.com
`KIRKLAND & ELLIS LLP
`1301 Pennsylvania Ave., N.W.
`Washington, D.C. 20004
`Telephone: (202) 389-5000
`Facsimile: (202) 389-5200
`
`Ellisen Shelton Turner (No. 54,503)
`ellisen.turner@kirkland.com
`Joshua Popik Glucoft (No. 67,696)
`josh.glucoft@kirkland.com
`KIRKLAND & ELLIS LLP
`2049 Century Park East,
`Los Angeles, CA 90067
`Telephone: (310) 552-4200
`Facsimile: (310) 552-5900
`
`Akshay S. Deoras (pro hac vice)
`akshay.deoras@kirkland.com
`KIRKLAND & ELLIS LLP
`555 California Street
`San Francisco, CA 94104
`Telephone: (415) 439-1400
`Facsimile: (415) 439-1500
`
`Yimeng Dou (No. 69,770)
`yimeng.dou@kirkland.com
`KIRKLAND & ELLIS LLP
`555 South Flower Street, Suite 3700
`Los Angeles, CA 90071
`
`4
`
`
`
`
`
`
`
`
`Joint Motion to Terminate
`IPR2022-01304
`
`
`Telephone: (213) 680-8400
`Facsimile: (213) 680-8500
`
`Meta-Thales-IPR@kirkland.com
`
`Attorneys for Petitioner Meta Platforms,
`Inc.
`
`/Meredith Martin Addy/
`Meredith Martin Addy (Reg. No. 37,883)
`ADDYHART P.C.
`10 Glenlake Parkway, Suite 130
`Atlanta, Georgia 30328
`312.320.4200
`312.264.2547 (fax)
`Thales-Meta-IPRs@addyhart.com
`
`Robert P. Hart (Reg. No. 35,184)
`Gregory B. Gulliver (Reg. No. 44,138)
`Brandon C. Helms (Reg. No. 61,742)
`ADDYHART P.C.
`401 N. Michigan Avenue, Suite 1200-1
`Chicago, IL 60611
`Thales-Meta-IPRs@addyhart.com
`
`Counsel for Patent Owner Thales
`Visionix, Inc.
`
`
`
`
`5
`
`
`
`APPENDIX A
`PETITIONER’S UPDATED EXHIBIT LIST
`
`Description
`
`Exhibit
`No.
`1001 U.S. Patent No. 6,922,632
`1002
`File History of U.S. Patent No. 6,922,632
`1003 U.S. Patent No. 7,725,253
`1004
`File History of U.S. Patent No. 7,725,253
`1005 Declaration of Dr. Ulrich Neumann in Support of Inter
`Partes Review of U.S. Patent No. 6,922,632
`1006 Curriculum Vitae of Dr. Ulrich Neumann
`1007 Welch, G. et al., “High-Performance Wide-Area
`Optical Tracking” (2001)
`1008 Welch, G. et al., “SCAAT: Incremental Tracking with
`Incomplete Information” (1997)
`1009 Welch G. “SCAAT: Incremental Tracking with
`Incomplete Information” PhD Thesis, University of
`North Carolina (1996)
`1010 U.S. Patent No. 5,615,132
`1011 U.S. Patent No. 5,307,289
`1012 Gentex’s Amended Preliminary Infringement
`Contentions and corresponding Exhibits 4 and 5 (’632
`and ’253 infringement charts)
`1013 Azuma, R. “Predictive Tracking for Augmented
`Reality” PhD Thesis, University of North Carolina
`(1995)
`1014 You, S. and Neumann, U. “Orientation Tracking for
`Outdoor Augmented Reality Registration.” (1999)
`1015 Carlson, Neal A. and Berarducci, Michael P.
`“Federated Kalman Filter Simulation Results.”
`Navigation. Vol. 41, Issue 3 at 297-322. (Fall 1994)
`1016 Reitmayr, Gerhard and Schmalstieg. “An Open
`Software Architecture for Virtual Reality Interaction”
`VRST ’01 (November 2001)
`1017 Barfield, W. “Fundamentals of Wearable Computers
`and Augmented Reality” (2001)
`
`Joint Motion to Terminate
`IPR2022-01304
`
`
`Previously
`Filed
`X
`X
`X
`X
`X
`
`X
`X
`
`X
`
`X
`
`X
`X
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`6
`
`
`
`Joint Motion to Terminate
`IPR2022-01304
`
`
`Previously
`Filed
`X
`
`X
`
`X
`
`X
`
`X
`X
`X
`
`X
`
`X
`
`X
`
`X
`
`Description
`
`Exhibit
`No.
`1018 Declaration of Rachel J. Watters regarding Welch, G.
`et al., “High-Performance Wide-Area Optical
`Tracking” (2001)
`1019 Declaration of Scott Delman regarding Welch, G. et al.,
`“SCAAT: Incremental Tracking with Incomplete
`Information” (1997)
`1020 Declaration of Dr. James L. Mullins regarding Welch
`G. “SCAAT: Incremental Tracking with Incomplete
`Information” PhD Thesis, University of North Carolina
`(1996)
`1021 Declaration of Scott Delman regarding Reitmayr,
`Gerhard and Schmalstieg. “An Open Software
`Architecture for Virtual Reality Interaction” VRST ’01
`(November 2001)
`1022 U.S. Patent No. 5,807,284
`1023 U.S. Patent No. 5,991,085
`1024 Chen, Steven C. and Lee, Kang. “A mixed-mode smart
`transducer interface for sensors and actuators”, Sound
`& Vibration, 32(4), 24-27 (April 1998)
`1025 Hoff, William and Vincent, Tyrone. “Analysis of Head
`Pose Accuracy in Augmented Reality”, IEEE
`Transactions on Visualization and Computer Graphics,
`Vol. 6, Issue 4, October – December 2000.
`Zetu, Dan et al., “Extended-Range Hybrid Tracker and
`Applications to Motion and Camera Tracking in
`Manufacturing Systems,” IEEE Transactions on
`Robotics and Automation, Vol. 16, Issue 3, June 2000
`1027 Declaration of Rachel J. Watters regarding Chen,
`Steven C. and Lee, Kang. “A mixed-mode smart
`transducer interface for sensors and actuators.” Sound
`& Vibration, 32(4), 24-27 (April 1998)
`1028 Declaration of Gordon MacPherson regarding Hoff,
`William and Vincent, Tyrone. “Analysis of Head Pose
`Accuracy in Augmented Reality”, IEEE Transactions
`on Visualization and Computer Graphics, Vol. 6, Issue
`4, October – December 2000.
`
`1026
`
`7
`
`
`
`Exhibit
`No.
`1029 Declaration of Gordon MacPherson regarding Zetu,
`Dan et al., “Extended-Range Hybrid Tracker and
`Applications to Motion and Camera Tracking in
`Manufacturing Systems,” IEEE Transactions on
`Robotics and Automation, Vol. 16, Issue 3, June 2000
`1030 U.S. Patent No. 5,592,401
`1031 Case Management and Pretrial Order, Dkt. 116, Gentex
`Corporation et al. v Meta Platforms, Inc. et al.
`(October 18, 2022)
`1032 Declaration of Akshay S. Deoras in Support of
`Unopposed Motion to Appear Pro Hac Vice on Behalf
`of Petitioner
`1033 Deposition Transcript of Yohan Baillot, dated
`September 13, 2023
`Excerpts from Random House Webster’s Unabridged
`Dictionary, 2nd Ed. (2001)
`Excerpts from The Computer Engineering Handbook
`(2001)
`1036 Compare Benefits of CPUs, GPUs, and FPGAs for
`Different oneAPI Compute Workloads
`Plaintiffs’ Disclosure of Asserted Claims and
`Infringement Contentions Pursuant to Patent L.R. 3-1,
`Gentex Corp. v. Meta Platforms, Inc., No. 22-cv-3892-
`YGR (N.D. Cal. Oct. 21, 2022)
`Supplemental Declaration of Dr. Ulrich Neumann in
`Support of Inter Partes Review of U.S. Patent Nos.
`6,922,632 and 7,725,253
`Email correspondence from Patent Trial & Appeal
`Board to parties’ counsel, dated May 31, 2023
`Email correspondence from Patent Owner’s counsel to
`Petitioner’s counsel, dated October 1, 2023
`Petitioner’s Demonstratives
`1041
`1042 Meta-Gentex Agreement [CONFIDENTIAL]
`
`1034
`
`1035
`
`1037
`
`1038
`
`1039
`
`1040
`
`Joint Motion to Terminate
`IPR2022-01304
`
`Previously
`Filed
`X
`
`X
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`Description
`
`8
`
`
`
`Joint Motion to Terminate
`IPR2022-01304
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing document was
`
`served on January 17, 2024 via electronic mail directed to counsel of record for the
`
`Patent Owner at the following:
`
`Thales-Meta-IPRs@addyhart.com
`
`Gentex-IPR@wc.com
`
`
`
`/W. Todd Baker/
`W. Todd Baker (No. 45,265)
`
`9
`
`
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