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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`TAIWAN SEMICONDUCTOR MANUFACTURING CO., LTD,
`Petitioner,
`
`v.
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`GODO KAISHA IP BRIDGE 1,
`Patent Owner.
`____________
`
`IPR2017-018411
`Patent 7,893,501
`____________
`
`
`
`JOINT MOTION TO TERMINATE THE PROCEEDINGS
`PURSUANT TO 35 U.S.C. § 317
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`
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`
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`Alexandria, VA 22313-1450
`
`
`
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`1 Case IPR2017-01842 has been consolidated with this proceeding. Substantially
`the same paper was filed in IPR2017-01843 (which has been consolidated with
`IPR2017-01844) and IPR2017-01862．
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`
`
`
`
`
`
`Pursuant to 35 U.S.C. § 317(a), Petitioner Taiwan Semiconductor
`
`Manufacturing Co., LTD (“Petitioner”) and Patent Owner Godo Kaisha IP Bridge
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`1 (“Patent Owner”) jointly request termination of the Inter Partes Review of U.S.
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`Patent No. 7,893,501 (the “‘501 patent”), Case Nos. IPR2017-01841 and IPR2017-
`
`01842.
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`On January 14, 2019, the Parties notified the Board that the Parties reached a
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`settlement related to the ’501 patent. As a result of that settlement, there are no
`
`longer any disputes between the parties involving the ’501 patent. On that basis,
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`the Parties requested permission to file a joint motion to terminate IPR2017-01841
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`and IPR2017-01842. On January 14, 2019, the Board authorized the Parties, via
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`email, to file a joint motion to terminate.
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`The parties have settled their dispute and have reached agreement to
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`terminate IPR2017-01841 and IPR2017-01842. This Settlement Agreement has
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`been made in writing, and a true and correct copy shall be filed with this Office as
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`business confidential pursuant to 35 U.S.C. § 317(b).
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`Termination of this IPR is appropriate because the Board has not yet
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`“decided the merits of the proceeding.” See, e.g., Office Patent Trial Practice
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`Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). The merits have not been
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`decided because this proceeding is in a preliminary stage, that is, no decision on
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`institution has been entered. See, e.g., AM General LLC v. Uusi, LLC, IPR2016-
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`1
`
`
`
`
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`01050, Paper 44 (Nov. 7, 2017) (terminating an IPR after the oral hearing); Lam
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`Research Corp. v. Daniel L. Flamm, IPR2015-01764, IPR2015-01767, IPR2015-
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`01768 Paper 27 (Dec. 15, 2016) (same); Hydrite Chemical Co. v. Solenis
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`Technologies, L.P., IPR2015-01586, Paper 38, IPR2015-01592, Paper 39 (Nov.
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`25, 2016) (same); Clio USA, Inc. v. The Procter & Gamble Company, IPR2013-
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`00438, Paper 57 (Oct. 31, 2014) (same).
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`No dispute remains between the Parties involving the ’501 patent.
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`Moreover, all currently pending district court litigations and IPR proceedings
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`involving the ‘501 patent will be dismissed under the terms of the Settlement
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`Agreement. Maintaining this proceeding in the absence of Petitioner would
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`contradict the Board’s policy of favoring settlement between the parties to a
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`proceeding, see, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48756,
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`48768 (Aug. 14, 2012) (“There are strong public policy reasons to favor settlement
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`between the parties to a proceeding . . . The Board expects that a proceeding will
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`terminate after the filing of a settlement agreement.”), and would contradict the
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`Congressional goal to establish a more efficient and streamlined patent system that
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`limits unnecessary and counterproductive litigation costs, see, e.g., AM General
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`LLC, IPR2016-01050, Paper 44 (terminating an IPR after the oral hearing: “These
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`proceedings are at a late stage of the trial. However, the Board has not yet entered
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`final written decisions on the merits . . . Generally, the Board expects that a
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`2
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`
`
`
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`proceeding will terminate after the filing of a settlement agreement.”); Hydrite
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`Chemical Co., IPR2015-01586, Paper 38, pp. 3-4, IPR2015-01592, Paper 39, pp.
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`3-4 (terminating an IPR after the oral hearing: “We are persuaded that the parties’
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`disputes are settled completely and, under these circumstances, the public policy
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`favoring settlement outweighs the increased public interest in final written
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`decisions at this late stage in these proceedings.”) Accordingly, termination is
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`appropriate.
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`As noted above, all currently pending district court litigations and IPR
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`proceedings involving the ’501 patent will be dismissed with prejudice under the
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`terms of the Settlement Agreement.
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`Therefore, Petitioner and Patent Owner respectfully request termination of
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`the Inter Partes Review of U.S. Patent No. 7,893,501, Case Nos. IPR2017-01841
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`and IPR2017-01842.
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`
`
`
`
`Dated: January 22, 2019
`
`By/Gerald B. Hrycyszyn /
`Gerald B. Hrycyszyn, Reg. No. 50,474
`Richard F. Giunta, Reg. No. 36,149
`Edmund J. Walsh, Reg. No. 32,950
`WOLF GREENFIELD & SACKS, P.C.
`600 Atlantic Ave.
`Boston, MA 02210-2206
`Tel: 617-646-8000
`Fax: 617-646-8646
`Attorneys for Patent Owner
`
`
`3
`
`Respectfully submitted,
`
`By/David L. Cavanaugh/
`David L. Cavanaugh, Reg. No. 36,476
`Dominic E. Massa, Reg. No. 44,905
`Michael H. Smith, Reg. No. 71,190
`WILMER CUTLER PICKERING
`HALE & DORR LLP
`1875 Pennsylvania Ave. NW
`Washington, DC 20006
`Tel: (202) 663-6000
`Attorneys for Petitioner
`
`
`
`
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`CERTIFICATE OF SERVICE UNDER 37 C.F.R. §42.6 (e)(4)
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`I certify that on January 22, 2019 I will cause a copy of the foregoing
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`document, including any exhibits referred to therein, to be served via electronic
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`mail, as previously consented to by Petitioner, upon the following:
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`David L. Cavanaugh
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` David.Cavanaugh@wilmerhale.com
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`Dominic E. Massa
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` Dominic.Massa@wilmerhale.com
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`Michael H. Smith
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` MichaelH.Smith@wilmerhale.com
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`
`
`Date: January 22, 2019
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`/MacAulay Rush/
`MacAulay Rush
`Paralegal
`WOLF GREENFIELD & SACKS, P.C.
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`4
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`
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