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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`XILINX, INC.
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`Petitioner
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`v.
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`POLARIS INNOVATIONS LIMITED
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`Patent Owner
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`Case IPR2023-00516
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`U.S. Patent 6,157,589
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`JOINT MOTION TO TERMINATE PROCEEDING
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`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74, Petitioner Xilinx, Inc.
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`and Patent Owner Polaris Innovations Limited (collectively, the “Parties”), through
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`their respective counsel of record, jointly request termination of this proceeding in
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`view of the Parties’ resolution of their dispute relating to U.S. Patent No. 6,157,589
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`(the “’589 Patent”). The Board authorized the filing of this Joint Motion to
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`Terminate via e-mail dated February 7, 2024.
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`Termination with respect to Petitioner and Patent Owner is appropriate in the
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`instant proceeding because the dispute between the parties has been resolved. The
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`Parties have reached a confidential settlement of their dispute with respect to the
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`’589 Patent, which includes an agreement to terminate this and all related
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`proceedings. The confidential settlement agreement between Petitioner and Patent
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`Owner has been made in writing, and a true and correct copy of the settlement
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`agreement between the Parties is filed concurrently with this motion as Exhibit 1020
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`(which is submitted as “Parties and Board Only”), pursuant to 35 U.S.C. § 317(b),
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`along with a separate Joint Request to Treat as Confidential and Keep Separate
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`Pursuant to 35 U.S.C. § 317(b). The Parties certify that there are no other collateral
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`agreements or understandings, oral or written, between the Parties made in
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`connection with, or in contemplation of, the termination of this proceeding. The
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`Parties request that the settlement agreement be treated as business confidential
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`information, be kept separate from the files of the involved patent, and be made
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`available only pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74(c).
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`Pursuant to 37 C.F.R. §§ 42.5 and 42.72, the Board may terminate a trial
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`without rendering a final written decision, where appropriate, including pursuant to
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`a joint request under 35 U.S.C. §§ 317(a). See Winplus N. Am., Inc. v. Pilot, Inc.,
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`IPR2018-00488, Paper 12 (PTAB Oct. 24, 2018). “There are strong public policy
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`reasons to favor settlement between the parties to a proceeding. . . . The Board
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`expects that a proceeding will terminate after the filing of a settlement agreement,
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`unless the Board has already decided the merits of the proceeding.” PTAB
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`Consolidated Trial Practice Guide at 86 (November 2019).
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`This proceeding was instituted on September 15, 2023. Paper 12. Patent Owner
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`filed its response on December 11, 2023. Paper 17. Petitioner has yet to file its Reply,
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`which is due on March 4, 2024. Paper 13 at 12. Oral argument is set for June 12, 2024.
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`Id. As such, the Board has not already decided the merits, making termination
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`appropriate under 34 C.F.R. § 42.72. Moreover, the parallel litigations will be
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`dismissed pursuant to the Parties’ settlement agreement.
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`Therefore, for the foregoing reasons, Petitioner and Patent Owner jointly
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`request termination of this proceeding.
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`/Brian W. Oaks/
`Brian W. Oaks (Reg. No. 44,981)
`Aashish G. Kapadia (Reg. No. 78,844)
`MCDERMOTT WILL & EMERY LLP
`300 Colorado Street, Suite 2200
`Austin, TX 78701
`TEL: 512-726-2600
`FAX: 512-532-0002
`boaks@mwe.com
`akapadia@mwe.com
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`Attorneys for Petitioner,
`Xilinx, Inc.
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`/David T. DeZern/
`David T. DeZern
`Registration No. 60,117
`NELSON BUMGARDNER CONROY
`P.C.
`2727 N. Harwood Street, Suite 250
`Dallas, TX 75201
`Telephone: (214) 446-4950
`Email: david@nelbum.com
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`Attorney for Patent Owner
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`Dated: February 8, 2024
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`Respectfully submitted,
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6, the undersigned certifies that on February 8,
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`2024, a copy of the foregoing document was electronically served on the following
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`counsel of record for Patent Owner:
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`david@nelbum.com
`bbumgardner@nbclaw.net
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`/Brian W. Oaks/
`Brian W. Oaks
`Lead Counsel for Petitioner
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