UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`REALTEK SEMICONDUCTOR
`CORPORATION
`Petitioner
`v.
`ANDREA ELECTRONICS
`CORPORATION
`Patent Owner
`
`
`
`Case: IPR2015-01391
`U.S. Patent No. 5,825,898
`
`
`
`PARTIES’ JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317
`
`Pursuant to 35 U.S.C. § 317(a), Petitioner, Realtek Semiconductor
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`Corp. (“Realtek”), and Patent Owner, Andrea Electronics Corp. (“Andrea”),
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`jointly request termination of this inter partes review of U.S. Patent No.
`
`5,825,898, Case No. IPR2015-01391.
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`REALTEK SEMICONDUCTOR
`CORPORATION
`Petitioner
`v.
`ANDREA ELECTRONICS
`CORPORATION
`Patent Owner
`
`
`
`Case: IPR2015-01391
`U.S. Patent No. 5,825,898
`
`
`
`PARTIES’ JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317
`
`Pursuant to 35 U.S.C. § 317(a), Petitioner, Realtek Semiconductor
`
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`Corp. (“Realtek”), and Patent Owner, Andrea Electronics Corp. (“Andrea”),
`
`jointly request termination of this inter partes review of U.S. Patent No.
`
`5,825,898, Case No. IPR2015-01391.
`
`
`
`Joint Motion to Terminate Proceeding
`Case IPR2015-01391
`U.S. Patent No. 5,825,898
`
`I.
`
`Termination of This Proceeding Is Appropriate
`
`
`
`
`
`
`Termination of this proceeding by the PTAB is appropriate. This case
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`is still in the preliminary proceeding stage, the inter partes review trial has
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`not yet been instituted, and no motions or petitions are outstanding in this
`case. Termination with respect to Petitioner is proper under 35 U.S.C. §
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`317(a) because the parties are jointly requesting termination and the Office
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`has not yet “decided the merits of the proceeding before the request for
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`termination is filed.” Further, on October 15, 2015, Realtek and Andrea
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`entered into a Settlement Agreement (a true copy of which, and its collateral
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`License Agreement, is filed concurrently as Ex. 2001). Thus, termination of
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`this proceeding is appropriate because (i) the case is in the preliminary
`
`proceeding stage, (ii) the parties have settled their dispute, and (iii) the parties
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`have agreed to jointly move to terminate this inter partes review proceeding.
`
`II.
`
`Status of Related Matters
`
`Andrea has asserted the ‘898 Patent against multiple companies in
`
`the Eastern District of New York and the International Trade Commission
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`(“ITC”). The ITC Investigation, Certain Audio Processing Hardware and
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`Software and Products Containing Same, Inv. No. 337-TA-949, filed on
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`February 9, 2015 against Realtek, Acer Inc., Acer America Corp., ASUS
`
`Computer International, ASUSTeK Computer Inc., Dell Inc., Hewlett
`2
`
`
`
`
`Joint Motion to Terminate Proceeding
`Case IPR2015-01391
`U.S. Patent No. 5,825,898
`
`Packard Co, Lenovo Holding Co., Inc., Lenovo (United States) Inc.,
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`Toshiba Corp., and Toshiba America Information Systems, Inc., is
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`currently pending.
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`The following cases were filed on July 25, 2014, all of which are
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`stayed pending the resolution of the ITC Investigation.
`
`• Andrea Electronics Corporation v. Acer Inc. et al, 2:14-cv-04488
`
`• Andrea Electronics Corporation v. Lenovo Group Ltd. et al, 2:14-cv-
`
`04489
`
`• Andrea Electronics Corporation v. Toshiba Corporation et al, 2:14-cv-
`
`04492
`
`The following cases were filed on January 14, 2015.
`
`• Andrea Electronics Corporation v. Hewlett-Packard Company, 2:15-
`
`cv-00208
`
`• Andrea Electronics Corporation v. Dell Inc., 2:15-cv-00209
`
`• Andrea Electronics Corporation v. ASUSTeK Computer Inc. et al,
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`2:15-cv-00214
`
`• Andrea Electronics Corporation v. Realtek Semiconductor Corp., 2:15-
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`cv-00215
`
`
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`In addition, Realtek filed a breach of contract lawsuit concerning a
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`license agreement related to the ‘898 Patent against Andrea in the U.S. District
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`
`
`3
`
`
`
`Joint Motion to Terminate Proceeding
`Case IPR2015-01391
`U.S. Patent No. 5,825,898
`
`Court for the Northern District of California on July 9, 2015, 5:15-cv-03184.
`
`The initial case management conference has been scheduled for November 12,
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`2015.
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`III. Settlement Agreement
`As required by 35 U.S.C. § 317(b), a true and correct copy of the
`Settlement Agreement is being filed with the Patent Office. The parties
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`desire that the Settlement Agreement be maintained as business confidential
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`information under 37 C.F.R. §42.74(c) and a separate joint request to that
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`effect is being filed on this date. In accordance with 35 U.S.C. § 317(a), no
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`estoppel under 35 U.S.C. § 315(e) shall attach to Realtek because Realtek
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`and Andrea jointly request termination.
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`Therefore, the parties respectfully request termination of these
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`proceedings.
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`Respectfully submitted,
`
`
`
`4
`
`
`
`Joint Motion to Terminate Proceeding
`Case IPR2015-01391
`U.S. Patent No. 5,825,898
`/ John M. Caracappa /
`John M. Caracappa, Reg. No. 43,532
`jcaracap@steptoe.com
`Tremayne M. Norris, Reg. No. 58,683
`tnorris@steptoe.com
`STEPTOE & JOHNSON LLP
`1330 Connecticut Avenue, NW
`Washington, DC 20036-1795
`Telephone: 202-429-3000
`Facsimile: 202-429-3902
`
`for Realtek
`Counsel
`Corporation
`
`Semiconductor
`
`/Andy H. Chan /
`Andy H. Chan, Reg. No. 56,893
`Pepper Hamilton LLP
`333 Twin Dolphin Drive
`Suite 400
`Redwood City, CA 94065
`(650) 802-3602 (telephone)
`(650) 802-3650 (facsimile)
`
`for
`Counsel
`Corporation
`
`Andrea
`
`Electronics
`
`5
`
`
`Date: October 16, 2015 By:
`
`
` By:
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`
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`
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`Joint Motion to Terminate Proceeding
`Case IPR2015-01391
`U.S. Patent No. 5,825,898
`
`CERTIFICATE OF SERVICE
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`
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies service of
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`PARTIES’
`
`JOINT MOTION TO TERMINATE PROCEEDING
`
`PURSUANT TO 35 U.S.C. § 317 on the Patent Owner by filing this
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`document through the Patent Review Processing System as well as
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`delivering a copy via electronic mail to the following address:
`
`jcaracap@steptoe.com
`tnorris@steptoe.com
`dhecht@steptoe.com
`skuo@steptoe.com
`thill@steptoe.com
`Realtek898IPR@steptoe.com
`
`chana@pepperlaw.com
`haightg@pepperlaw.com
`lil@pepperlaw.com
`mesmerg@pepperlaw.com
`
`
`
`John M. Caracappa
`Tremayne M. Norris
`David L. Hecht
`Stanley C.T. Kuo
`Trevor C. Hill
`Steptoe & Johnson LLP
`1330 Connecticut Avenue, NW
`Washington, DC 20036-1795
`T: 202-429-6267
`F: 202-261-0597
`
`Andy H. Chan
`George S. Haight
`Yue (Lily) Li
`Griffin Mesmer
`Pepper Hamilton LLP
`333 Twin Dolphin Drive
`Suite 400
`Redwood City, CA 94065
`(650) 802-3602 (telephone)
`(650) 802-3650 (facsimile)
`
`
`
`
`6
`
`
`
`Joint Motion to Terminate Proceeding
`Case IPR2015-01391
`U.S. Patent No. 5,825,898
`
`/ John M. Caracappa /
`John M. Caracappa, Reg. No. 43,532
`jcaracap@steptoe.com
`Tremayne M. Norris, Reg. No. 58,683
`tnorris@steptoe.com
`STEPTOE & JOHNSON LLP
`1330 Connecticut Avenue, NW
`Washington, DC 20036-1795
`Telephone: 202-429-3000
`Facsimile: 202-429-3902
`
`for Realtek
`Counsel
`Corporation
`
`Semiconductor
`
`/Andy H. Chan /
`Andy H. Chan, Reg. No. 56,893
`Pepper Hamilton LLP
`333 Twin Dolphin Drive
`Suite 400
`Redwood City, CA 94065
`(650) 802-3602 (telephone)
`(650) 802-3650 (facsimile)
`
`for
`Counsel
`Corporation
`
`Andrea
`
`Electronics
`
`7
`
`
`
`
`Date: October 16, 2015 By:
`
`
` By:
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