`
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________
`
`REALTEK SEMICONDUCTOR CORP.,
`
`and
`
`TCL INDUSTRIES HOLDINGS CO., INC.
`
`Petitioners,
`
`v.
`
`ATI TECHNOLOGIES ULC
`
`Patent Owner.
`_________________________
`
`Case No. IPR2023-009221
`
`U.S. Patent No. 8,760,454
`
`_________________________
`
`JOINT MOTION TO TERMINATE PROCEEDINGS
`35 U.S.C. § 317; 37 C.F.R. § 42.74(b)
`
`1 Joinder with IPR2024-00366
`
`1
`
`
`
`Pursuant to 35 U.S.C. § 317(a), Petitioner Realtek Semiconductor Corp.
`
`(“Realtek”) and Patent Owner ATI Technologies ULC (“ATI”) jointly request
`
`termination of the inter partes review of U.S. Patent No. 8,760,454, Case No.
`
`IPR2023-00922.
`
`The parties have reached agreement to terminate this inter partes review. A
`
`true copy of the pertinent written Agreement is being filed separately and
`
`concurrently herewith as Exhibit 1025 along with a request to treat it as confidential
`
`business information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74.2 The
`
`parties certify that no other agreements or understandings, oral or written, exist
`
`between the parties in connection with, or in contemplation of, the termination of
`
`the proceeding. Pursuant to this Agreement and concurrent with this filing, similar
`
`requests for termination are being filed with respect to all other corresponding
`
`actions between the parties including ones pending with the ITC and federal district
`
`court for the Eastern District of Texas in which Patent Owner asserted the ’454
`
`Patent against Petitioner. On June 20, 2024, the parties informed the Board of the
`
`resolution via email and requested authorization to file a motion to terminate the
`
`petition with respect to both the Patent Owner and the Petitioner. As set forth in an
`
`Pursuant to 37 C.F.R. § 42.74(c), the parties have filed a separate joint
`2
`request that this Exhibit 1025 be treated as confidential business information and
`be made available to the Board only.
`
`2
`
`
`
`email dated June 20, 2024 (attached hereto as Exhibit 1026), the Board authorized
`
`the filing of the requested motion to terminate this petition.
`
`As stated in 35 U.S.C. § 317(a), because Realtek and ATI request this
`
`termination as to Petitioner Realtek, no estoppel under 35 U.S.C. § 315(e) with
`
`respect to U.S. Patent No. 8,760,454 shall attach to Realtek.
`
`Dated: June 24, 2024
`
` /Jeffrey L. Johnson/
`
`
`
`Jeffrey L. 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
`
`Christopher J. Higgins
`Reg. No. 66,422
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`Columbia Center
`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
`
`3
`
`
`
`Counsel for Petitioner Realtek
`Semiconductor Corp.
`
`/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
`Phone: 858-314-1596
`Fax: 858-314-1501
`RDokhanchy@mintz.com
`
`Counsel for Patent Owner
`ATI Technologies ULC
`
`4
`
`
`
`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e), I certify that on this 24th day of June,
`
`2024, the foregoing Joint Motion to Terminate Proceeding was served by email
`
`on the following counsel for Patent Owner:
`
`William A. Meunier
`wameunier@mintz.com
`
`Michael T. Renaud
`mtrenaud@mintz.com
`
`Adam S. Rizk
`arizk@mintz.com
`
`Reza Dokhanchy
`rdokhanchy@mintz.com
`
`AMD_IPRS@mintz.com
`
`FOR PETITIONER
`IPR2024-00366:
`John Schnurer
`schnurer-ptab@perkinscoie.com
`Yun (Louise) Lu
`lu-ptab@perkinscoie.com
`Kevin J. Patariu
`patariu-ptab@perkinscoie.com
`Kyle R. Canavera
`canavera-ptab@perkinscoie.com
`PERKINS COIE LLP
`Email: PerkinsServiceTCL-AMDIPRs@perkinscoie.com
`
`Date: June 24, 2024
`
`
`/Jeffrey L. Johnson/
`Jeffrey L. Johnson (Reg. No. 53,078)
`
`5
`
`
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