Patent Owner is advised of the requirement to submit mandatory notice information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of the petition.

The parties are advised that under 37 C.F.R. § 42.10(c), recognition of counsel pro hac vice requires a showing of good cause.

Such motions shall be filed in accordance with the “Order -- Authorizing Motion for Pro Hac Vice Admission” in Case IPR2013-00639, Paper 7, a copy of which is available on the Board Web site under “Representative Orders, Decisions, and Notices.” The parties are reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in the Patent Trial Appeal Case Tracking System (P-TACTS), accessible from the Board Web site at http://www.uspto.gov/PTAB.

Jaime W. Marquart WAYMAKER LLP 515 S. Flower Street Suite 3500 Los Angeles, CA 90071 John Jeffrey Eichmann

Many non-profit organizations, both inside and outside the intellectual property field, offer alternative dispute resolution services.

No. 2008/0222581 (“Banerjee”) CoWare-a design environment for heterogeneous hardware/software systems, K. Van Rompaey, D. Verkest, I. Bolsens and H. De Man, Proceedings EURO-DAC ’96, Geneva, Switzerland, pp. 252-257 (1996).

CoWare—A design environment for heterogeneous hardware/software systems, Verkest, D., Van Rompaey, K., Bolsens, I. et al. Des Autom Embed Syst 1, 357–386 (1996).

Legal Standard 35 U.S.C. § 317(a) provides that “[a]n inter partes review instituted under this chapter 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.” 37 C.F.R. § 42.72 similarly provides that “[t]he Board may terminate a trial without rendering a final written decision, where appropriate ... pursuant to a joint request under 35 U.S.C. § 317(a).” The Trial Practice Guide also observes that “[t]here are strong public policy reasons to favor settlement between the parties to a proceeding” and that the 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.” 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012).

The Parties certify that there are no collateral agreements or understandings made in connection with, or in contemplation of, the termination of this inter partes review.

For at least the foregoing reasons, the Parties respectfully request that the Board terminate Inter Partes Review

Pursuant to 37 C.F.R. § 42.74(b), any agreement or understanding between the parties made in connection with, or in contemplation of, the termination of a proceeding shall be in writing and a true copy shall be filed with the Board before the termination of the trial.

Accordingly, the Parties have filed the Settlement Agreement herewith as Exhibit 1021.

Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), Petitioner and Patent Owner jointly request to file their Settlement Agreement, including the entirety of Exhibit 1021 to the Joint Motion to Terminate Proceeding, as business confidential information, and that it be kept separate from the file of the involved ’899 Patent.

The terms require the Parties to treat the Settlement Agreement as confidential information and limit the Parties’ ability to share the Settlement Agreement, or to disclose its contents with third parties.

As such, the Parties respectfully request that the Board treat Exhibit 1021 as business confidential information pursuant to 35 U.S.C. § 317(b) and 37

Interim Procedure For Discretionary Denials In AIA Post Grant Proceedings With Parallel District Court Litigation (June 21, 2022) ......... passim Andrew Karpan, “PTAB Sees Uptick In Filings After Vidal’s Fintiv Guidance,” LAW360, Feb. 15, 2023 ........................................................................................... 9 USPTO, Revised Interim Director Review Process.............................................5, 15 S. Rep. No. 110–259, at 20 (2008) ............................................................................ 9 ICPillar LLC (“Patent Owner”) respectfully requests that the Director review the August 7, 2024 decision to institute trial in this case.1 It is clear that the parties’ District Court infringement action will complete its trial well before any foreseeable completion of this IPR.

But the panel misinterpreted the Director’s guidance in NXP USA, Inc. v. Impinj, Inc., IPR2021-01556, Paper 13 (Sep. 7, 2022) (precedential), to foreclose discretionary denial on the sole basis that after the POPR the Petitioner submitted a broadened stipulation under Fintiv Factor 4.

Unfortunately, this statement in NXP has since been misinterpreted by PTAB panels, including this one, to effectively foreclose the exercise of discretion to deny institution in view of parallel district court litigation in all cases.

It is clearly inconsistent with the Director’s repeatedly stated desire to wield the discretion granted by Congress to prevent “inefficiency and gamesmanship in AIA proceedings,” Ex. 2010, 1, and “potentially conflicting decisions and duplicative efforts between the district court and the Board,” NXP, 4.

Every grant of institution in such circumstances will risk—or all but guarantee—the waste of millions of dollars completing pre-trial and trial proceedings, weeks or months of the time of the court and many private citizens on the jury, and potentially competing decisions on the validity of the same patent.

Pursuant to 37 C.F.R. § 42.64(b)(1) and the Federal Rules of Evidence (“FRE”), Patent Owner ICPillar LLC hereby objects to the following documents submitted by Petitioner ARM Limited.

Exhibit 1002 Under FRE 106/1001, 35 U.S.C. § 312(a)(3) & (5), and 37 C.F.R. § 42.51(b)(1), this document is incomplete and is not a copy which accurately reproduces the original.

Under FRE 801/802, this document constitutes and contains inadmissible hearsay to the extent Petitioner relies on its contents for the truth of the matters asserted therein.

Under FRE 801/802, this document constitutes and contains inadmissible hearsay to the extent Petitioner relies on its contents for the truth of the matters asserted therein.

Under FRE 801/802, this document constitutes and contains inadmissible hearsay to the extent Petitioner relies on them for the truth of the matters asserted therein.

The Petition cannot overcome the simple fact that Banjeree and Rompaey do not output software programming commands to be executed on a hardware IC.

But McAlexander does not even mention the arrow: he simply notes that FIG. 4 shows programming 71 as an output of the tool, as accompanying written description at 9:59-61 indicates.

The Board found no cause for further merits briefing, except “limited to: (1) the proper claim construction of the term ‘outputting by the processor software programming commands to be executed by the hardware integrated circuit for controlling the electronic device,’” and “(2) the impact that the asserted claim construction has on understanding the asserted prior art references,” Paper 7, 3-4; Ex. 2020, 21:10-13 (“we agree with Patent Owner that on…the substantive issues, that Petitioner hasn’t really shown good cause to file a reply”).

Yet Arm devotes most of the Reply to attempting to augment its substantive briefing on 1[d] in ways not addressing the impact of its asserted construction.

The Petition, trying to make Fintiv factor 4 “weigh[] against discretionary denial” despite a looming court trial, offered a “Sand Revolution” stipulation limited to “the grounds in this Petition.” Pet., 87.

Thus ICPillar seeks to improperly exclude a Petitioner’s Reply To POPR In IPR2024-00476 disclosure virtually identical to the sole embodiment in the ‘899 patent.

In designing the overall system/device, “Module 24 [optimizes by] selecting the processor that most closely matches the specified parameters and providing any additional functionality in software either at the application, middleware or operating system level.” EX-1005, [0078].

… The input is a heterogeneous specification of an electronic system, the output 12 may include a net list for prior-art commercial tools for the generation of the implementation layout.

But then ICPillar and its expert makes the creative and surprising argument that: “Rompaey outputs only ‘a net list comprising the layout information of the implementation’.…” EX-2001, ¶76.

Moreover, ICPillar apparently seeks to exclude the ‘899 patent’s sole embodiment describing “ASIC Design 69” as a “layout … sent out to a manufacturer for fabrication” that includes the alleged software output (ASIC Programming 71).

IBM, Documentation, SWITCH statement, updated Apr. 3, 2024, avail.

Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation, Katherine K. Vidal (USPTO June 21, 2022) [Interim Discretionary Denial Memo].

2013 United States District Courts – National Judicial Caseload Profile Trial Statistics [Trial-Statistics].

2017 2018 2019 ICPillar LLC v. ARM Ltd. et al, 1:23-CV-00282-ADA, Defendants’ [Petitioner’s] Preliminary Invalidity Contentions (Nov. 7, 2023) [Preliminary-Invalidity-Contentions].

ICPillar LLC v. ARM Ltd. et al, 1:23-CV-00282-ADA, Claim Construction Order (Mar. 26, 2024) [Markman-Order].