Paper 21
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`
`QUALCOMM INCORPORATED
`
`PETITIONER
`
`
`v.
`
`
`DAEDALUS PRIME LLC
`
`PATENT OWNER
`
`______________
`
`IPR2023-00567
`PATENT 10,049,080
`______________
`
`
`JOINT MOTION TO TERMINATE
`PURSUANT TO 35 U.S.C. § 317 and 37 C.F.R. § 42.74
`&
`REQUEST TO TREAT SETTLEMENT AGREEMENT AS BUSINESS
`CONFIDENTIAL INFORMATION AND KEEP SEPARATE
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`
`QUALCOMM INCORPORATED
`
`PETITIONER
`
`
`v.
`
`
`DAEDALUS PRIME LLC
`
`PATENT OWNER
`
`______________
`
`IPR2023-00567
`PATENT 10,049,080
`______________
`
`
`JOINT MOTION TO TERMINATE
`PURSUANT TO 35 U.S.C. § 317 and 37 C.F.R. § 42.74
`&
`REQUEST TO TREAT SETTLEMENT AGREEMENT AS BUSINESS
`CONFIDENTIAL INFORMATION AND KEEP SEPARATE
`
`
`
`
`
`
`
`IPR2023-00567
`Patent No. 10,049,080
`PETITIONER’S UPDATED EXHIBIT LIST
`DESCRIPTION
`
`Exhibit
`No.
`1001 U.S. Patent No. 10,049,080 to George et al. (“the ’080 Patent”)
`1002 Declaration of Dr. Trevor Mudge
`1003
`Curriculum Vitae of Dr. Trevor Mudge
`1004
`Prosecution History of the ’080 Patent (Application No. 15/431,527)
`1005 U.S. Patent Pub. No. 2011/0213950 to Mathieson et al.
`(“Mathieson”)
`1006 U.S. Patent Pub. No. 2009/0309243 to Carmack et al. (“Carmack”)
`1007 U.S. Patent Pub. No. 2008/0288748 to Sutardja et al. (“Sutardja
`’748”)
`1008 U.S. Patent Pub. No. 2007/0083785 to Sutardja (“Sutardja ’785”)
`1009 U.S. Patent Pub. No. 2011/0145615 to Rychlik et al. (“Rychlik”)
`1010
`Prosecution History of U.S. Patent No. 9,569,278 (“the ’278 Patent”)
`1011 –
`INTENTIONALLY LEFT BLANK
`1019
`Claim Mapping Table
`1020
`INTENTIONALLY LEFT BLANK
`1021
`1022 U.S. Patent Pub. No. 2006/0095807 to Grochowski (“Grochowski”)
`1023 U.S. Patent Pub. No. 2012/0317568 to Aasheim (“Aasheim”)
`1024
`Jeffrey C. Mogul et al., Operating Systems and Asymmetric Single-
`ISA CMPs: The Potential for Saving Energy, Hewlett-Packard
`Development Company, L.P. (2007)
`Juan Carlos Saez et al., Operating System Support for Mitigating
`Software Scalability Bottlenecks on Asymmetric Multicore
`Processors, ACM 978-1-4503-004-5/10/05 (2010)
`1026 U.S. Patent No. 7,093,147 to Farkas et al. (“Farkas”)
`1027
`Charles Lefurgy et al., Energy Management for Commercial Servers,
`Computer 39 (Dec. 2003).
`1028 Yushi Shen et al., Enabling the New Era of Cloud Computing: Data
`Security, Transfer, and Management (Information Science Reference
`2014).
`Stefanos Kaxiras and Margaret Martonosi, Computer Architecture
`Techniques for Power-Efficiency, in Synthesis Lectures on
`Computer Architecture #4 (Morgan & Claypool 2008).
`
`1025
`
`1029
`
`
`
`- i -
`
`
`
`
`
`
`
`
`
`Exhibit
`No.
`1030 Vasanth Venkatachalam and Michael Franz, Power Reduction
`Techniques For Microprocessor Systems, 37 ACM Computing
`Surveys 195 (2005).
`Euiseong Seo et al., Energy Efficient Scheduling of Real-Time
`Tasks on Multicore Processors, 19 IEEE Transactions on Parallel
`and Distributed Systems 1540 (Nov. 2008).
`Rakesh Kumar et al., Single-ISA Heterogeneous Multi-Core
`Architectures: The Potential for Processor Power Reduction,
`Proceedings of the 36th International Symposium on
`Microarchitecture (MICRO-36 2003), IEEE Computer Society
`(2003).
`1033 U.S. Patent No. 8,615,647 to Hum et al. (“Hum”)
`1034-
`INTENTIONALLY LEFT BLANK
`1038
`1039 Daedalus Prime LLC & Qualcomm Incorporated Settlement
`Agreement (BUSINESS CONFIDENTIAL)
`
`1031
`
`1032
`
`
`
`
`
`IPR2023-00567
`Patent 10,049,080
`
`DESCRIPTION
`
`- ii -
`
`
`
`IPR2023-00567
`Patent No. 10,049,080
`Patent Owner (“Daedalus Prime LLC”) and Petitioner (“Qualcomm
`
`Incorporated”) (collectively, “the Parties”) have reached a settlement. Pursuant to 35
`
`U.S.C. § 317(a) and 37 C.F.R. § 42.74, the Parties jointly request termination of this
`
`proceeding, IPR2023-00567, directed to U.S. Patent No. 10,049,080 (the “’080
`
`Patent”). The Parties were authorized to file this Joint Motion by the Board (via e-
`
`mail) on January 8, 2024.
`
`I.
`
`CERTIFICATION
`As required by 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74, the Parties jointly
`
`submit a true copy of the settlement agreement (the “Agreement”) between Patent
`
`Owner and Petitioner made in connection with, or in contemplation of, the
`
`termination of the proceeding under 37 CFR § 42.74(b) with this joint motion. The
`
`Agreement is filed herewith as a confidential exhibit (EX1039).
`
`The Parties certify that there are no other agreements or understandings
`
`between Patent Owner and Petitioner, or any collateral agreements referred to in the
`
`Agreement, made in connection with, or in contemplation of, the termination of this
`
`proceeding. 35 U.S.C. § 317(a); see also 37 CFR § 42.74(b).
`
`II.
`
`STATUS OF RELATED PROCEEDINGS
`The Parties have resolved their disputes regarding the ’080 Patent, including
`
`both in this proceeding and in the related district court litigation, Daedalus Prime
`
`LLC v. Mazda Motor Corporation et al., No. 1:22-cv-1109 (D. Del. 2022) and the
`
`
`
`- 1 -
`
`
`
`
`
`IPR2023-00567
`Patent 10,049,080
`related International Trade Commission Investigation, In re Certain Integrated
`
`
`
`Circuits, Mobile Devices Containing the Same, and Components Thereof; Inv. No.
`
`337-TA-1335. The Parties do not anticipate further litigation between them
`
`concerning the ’080 Patent.
`
`III. STATEMENT OF PRECISE RELIEF REQUESTED
`As authorized by the Board’s e-mail message on January 8, 2024, the Parties
`
`are jointly and contemporaneously filing: (i) this joint motion to terminate the
`
`proceeding; (ii) a true copy of the entire Agreement between Patent Owner and
`
`Petitioner; and (iii) a joint request to treat the Agreement as business confidential
`
`information and keep the Agreement separate from the file of the involved patent,
`
`pursuant to 37 C.F.R. § 42.74(c).
`
`The Parties jointly request the Board terminate this proceeding in its entirety.
`
`Termination of this proceeding is appropriate because a settlement has been reached.
`
`“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 proceedings before the request for termination is filed.” 35 U.S.C §
`
`317(a).
`
`Good cause exists to terminate this proceeding because: (1) Patent Owner and
`
`Petitioner resolved their disputes regarding the ’080 Patent; (2) “[t]here are strong
`
`public policy reasons to favor settlement between the parties to a proceeding”
`
`
`
`- 2 -
`
`
`
`
`
`IPR2023-00567
`Patent 10,049,080
`(Consolidated Trial Practice Guide (“TPG”) at 86 (November 2019)); (3) “[t]he
`
`
`
`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” (id.
`
`citing 35 U.S.C. §§ 317(a), 327); (4) the Board has granted late-stage termination in
`
`other proceedings, even after oral arguments (see, e.g., Nissan North America, Inc.
`
`& Nissan Motor Co., Ltd., v. Blitzsafe Tex., LLC, IPR2016-00418, Paper 50; SZ DJI
`
`Tech. Co., Ltd. & Parrot Inc. v. Drone-Control, LLC, IPR2018-00204, IPR2018-
`
`00205, IPR2018-00206, IPR2018-00207, IPR2018-00208, Paper 42); and (5)
`
`termination would serve the interests of judicial economy and both Parties.
`
`IV. REQUEST TO TREAT AS BUSINESS CONFIDENTIAL
`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74, the Parties jointly
`
`request to treat the Agreement (EX1039) between Patent Owner and Petitioner, as
`
`business confidential information that shall be kept separate from the file of the
`
`involved patent and be made available only to Federal Government agencies on
`
`written request or to persons showing good cause. See 35 U.S.C. § 317(b); 37 C.F.R.
`
`§ 42.74(c).
`
`V. CONCLUSION
`The Parties have settled all disputes relating to the ’080 Patent. The Board has
`
`not entered a final written decision on the merits. Accordingly, the Parties jointly
`
`and respectfully request that the Board terminate the instant proceeding in its entirety
`
`
`
`- 3 -
`
`
`
`
`
`IPR2023-00567
`Patent 10,049,080
`and treat Exhibit 1039 as Business Confidential Information and keep it separate
`
`
`
`from the patent file.
`
`Dated: January 11, 2024
`
`
`
`
`
`Respectfully submitted,
`
`/Eagle H. Robinson/
`Eagle H. Robinson
`
`Lead Counsel for Petitioner
`
`/Peter F. Snell/
`Peter F. Snell (Reg. No. 52,235)
`MINTZ, LEVIN, COHN, FERRIS
`GLOVSKY AND POPEO, P.C.
`919 Third Avenue
`New York, New York 10022
`Telephone: 212-692-6850
`Facsimile: 212-983-3115
`E-mail: PFSnell@mintz.com
`
`Counsel for Patent Owner,
`Daedalus Prime LLC
`
`
`
`- 4 -
`
`
`
`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on January 11,
`
`2024, a complete copy of the foregoing was served on Patent Owner via email (by
`
`IPR2023-00567
`Patent 10,049,080
`
`consent) at:
`
`PFSnell@mintz.com
`ARizk@mintz.com
`MTRenaud@mintz.com
`SSubach@mintz.com
`
`
`
`/Eagle H. Robinson/
`Eagle H. Robinson (Reg. No. 61,361)
`
`
`
`
`- 5 -
`
`
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