UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`REALTEK SEMICONDUCTOR CORP. and
`TCL INDUSTRIES HOLDINGS CO., LTD.
`Petitioners,
`
`v.
`
`ATI TECHNOLOGIES ULC,
`Patent Owner.
`
`_________________
`
`IPR2023-009221
`Patent No. 8,760,454 B2
`_________________
`
`JOINT MOTION TO TERMINATE PROCEEDING WITH RESPECT TO
`TCL PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.74
`
`1 Joinder with IPR2024-00366
`
`
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`REALTEK SEMICONDUCTOR CORP. and
`TCL INDUSTRIES HOLDINGS CO., LTD.
`Petitioners,
`
`v.
`
`ATI TECHNOLOGIES ULC,
`Patent Owner.
`
`_________________
`
`IPR2023-009221
`Patent No. 8,760,454 B2
`_________________
`
`JOINT MOTION TO TERMINATE PROCEEDING WITH RESPECT TO
`TCL PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.74
`
`1 Joinder with IPR2024-00366
`
`
`
`IPR2023-00922
`Patent No. 8,760,454
`
`I.
`
`INTRODUCTION
`TCL Industries Holding Co., Ltd. (“TCL”) and ATI Technologies ULC
`
`(“Patent Owner” or “ATI”) jointly request termination of the inter partes review of
`
`U.S. Patent No. 8,760,454 (“the ’454 patent”) with respect to TCL pursuant to 35
`
`U.S.C. § 317(a), 37 C.F.R. § 42.74, and the Board’s authorization via email given
`
`on June 12, 2024. This motion does not otherwise affect petitioner Realtek
`
`Semiconductor Corp. (“Realtek”).
`
`Terminating this proceeding with respect to TCL is within the Board’s
`
`discretion. Exercising that discretion here would conserve judicial resources and
`
`promote the strong policy reasons that favor settlement.
`
`II.
`
`PUBLIC POLICY FAVORS TERMINATING THIS PROCEEDING
`The Board has discretion to terminate inter partes review proceedings after
`
`the parties file a settlement agreement. 35 U.S.C. § 317(a); see also 37 C.F.R.
`
`§ 42.72. “There are strong public policy reasons to favor settlement between the
`
`parties to a proceeding.” PTAB Consolidated Trial Practice Guide, at 86 (Nov.
`
`2019), available at https://www.uspto.gov/TrialPracticeGuideConsolidated. The
`
`Board therefore terminates proceedings “after the filing of a settlement agreement,
`
`unless the Board already has decided the merits of the proceeding.” Id.
`
`Termination of this proceeding as to TCL is proper for at least the following
`
`reasons. This proceeding is at an early stage, and the Board has not decided the
`
`1
`
`
`
`IPR2023-00922
`Patent No. 8,760,454
`merits of the proceeding. 35 U.S.C. § 317(a); PTAB Consolidated Trial Practice
`
`Guide, at 86. The Board issued its institution decision and grant of joinder for TCL
`
`on March 29, 2024 Order (Paper 19), which is preliminary. See St. Jude Med.,
`
`Cardiology Div., Inc. v. Volcano Corp., 749 F.3d 1373, 1375–76 (Fed. Cir. 2014)
`
`(“the Director’s decision whether to institute a proceeding” differs from a “decision
`
`with respect to patentability”). Patent Owner filed Patent Owner’s response on
`
`February 23, 2024 (Paper 14), and TCL joined in the proceeding just three months
`
`ago. No motions are outstanding in this proceeding. Each of these facts supports
`
`terminating this proceeding.
`
`TCL and Patent Owner jointly request termination. TCL and Patent Owner
`
`reached the mutual decision to settle this proceeding and their related district court
`
`litigation regarding the ’454 patent. They agree that settlement of their disputes
`
`promotes efficiency and will minimize unnecessary costs. Terminating this
`
`proceeding as to TCL will consequently preserve judicial resources and enables the
`
`parties to minimize the cost of litigation. No public interest or other factors weigh
`
`against termination of this proceeding.
`
`TCL and Patent Owner executed a confidential settlement agreement to
`
`terminate this proceeding. The settlement agreement and related agreements are
`
`being submitted concurrently herewith. (See Ex. 2148, Ex. 2149, and Ex. 2150.)
`
`TCL and Patent Owner certify that there are no collateral agreements or
`
`2
`
`
`
`IPR2023-00922
`Patent No. 8,760,454
`understandings made in connection with, or in contemplation of, the termination of
`
`the proceeding. In accordance with 35 U.S.C. § 317 and 37 C.F.R. § 42.74(b), also
`
`submitted concurrently herewith is a joint request that the settlement agreement and
`
`the related agreements be treated as business confidential information, be kept
`
`separate from the file of the involved patent, and be made available only to the
`
`Federal Government agencies on written request, or to any person on showing of
`
`good cause under 35 U.S.C. § 317 and 37 C.F.R. § 42.74(c).
`
`For all of the above reasons, the Board should terminate this proceeding with
`
`respect to TCL to promote settlement and minimize unneeded expenditure of the
`
`Board’s resources.
`
`III. CONCLUSION
`For at least the foregoing reasons, the parties jointly request immediate and
`
`complete termination of this proceeding.
`
`3
`
`
`
`Dated: June 21, 2024
`
`By: /Yun (Louise) Lu/
`John P. Schnurer, Reg. No. 52,196
`Yun (Louise) Lu, Reg. No. 72,766
`Kevin J. Patariu, Reg. No. 63,210
`Kyle R. Canavera, Reg. No. 72,167
`
`PERKINS COIE LLP
`11452 El Camino Real, Ste 300
`San Diego, California 92130-2080
`Telephone: 858.720.5700
`Facsimile: 858.720.5799
`schnurer-ptab@perkinscoie.com
`lu-ptab@perkinscoie.com
`patariu-ptab@perkinscoie.com
`canavera-ptab@perkinscoie.com
`
`Counsel for Petitioner
`IPR2024-00366
`
`IPR2023-00922
`Patent No. 8,760,454
`Respectfully submitted,
`
`By: /William A. Meunier/
`William A. Meunier, Reg. No. 41,193
`Michael T. Renaud, Reg. No. 44,299
`Adam S. Rizk, Reg. No. 66,867
`
`MINTZ, LEVIN, COHN, FERRIS
`GLOVSKY AND POPEO, P.C.
`One Financial Center
`Boston, MA 02111
`Telephone: 617-542-6000
`Facsimile: 617-542-2241
`WAMeunier@mintz.com
`MTRenaud@mintz.com
`ARizk@mintz.com
`
`Reza Dokhanchy, Reg. No. 62,795
`MINTZ, LEVIN, COHN, FERRIS
`Glovsky and Popeo, P.C.
`3580 Carmel Mountain Road, Suite 300
`San Diego, CA 92130
`Telephone: 858-314-1596
`RDokhanchy@mintz.com
`
`Counsel for Patent Owner
`
`4
`
`
`
`IPR2023-00922
`Patent No. 8,760,454
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this June 21, 2024, a copy of the JOINT MOTION TO
`
`TERMINATE PROCEEDING PURSUANT to 35 U.S.C. § 317 and 37 C.F.R. §
`
`42.74 was served by electronic mail upon the following:
`
`FOR PETITIONER IPR2023-00922
`
`Lead Counsel
`Jeffrey Johnson
`Reg. No. 53,078
`BAKER BOTTS, LLP
`910 Louisiana Street
`Houston, TX 77002-4995
`Telephone: (713) 229-1234
`Facsimile: (713) 229-1522
`Email:
`Jeffrey.Johnson@bakerbotts.com
`DLBBRealTEKIPRs@bakerbotts.com
`
`Backup Counsel
`
`Christopher J. Higgins
`Reg. No. 66,422
`ORRICK, HERRINGTON &
`SUTCLIFFE, LLP
`2100 Pennsylvania Avenue NW
`Washington, D.C. 20037
`Telephone: (202) 339-8400
`Facsimile: (202) 339-8500
`Email: 0CHPTABDocket@orrick.com
`
`Steve Baik
`Reg. No. 42,281
`WHITE HAT LEGAL
`P. O. Box 382
`San Jose, CA 95002
`Telephone: (650) 618-5282
`Email: sbaik@whitehat.legal
`
`Dated: June 21, 2024
`
`/s/ William A. Meunier
`William A. Meunier (Reg. No. 41,193)
`
`5
`
`
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