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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
`
`_________________
`
`TCT MOBILE (US) INC.,
`HUIZOU TCL MOBILE COMMUNICATION CO. LTD., and
`SHENZEN TCL CREATIVE CLOUD TECHNOLOGY CO., LTD.,
`Petitioners,
`
`v.
`
`ANCORA TECHNOLOGIES, INC.,
`Patent Owner.
`
`_________________
`
`Patent No. 6,411,941
`IPR2020-01609
`_________________
`
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.74
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`IPR2020-01609
`Patent No. 6,411,941
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`I.
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`INTRODUCTION
`The parties jointly request termination of the inter partes review of U.S. Patent
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`No. 6,411,941 (“the ’941 patent”), Case No. IPR2020-01609, pursuant to 35 U.S.C.
`
`§ 317(a), 37 C.F.R. § 42.74, and the Board’s March 22, 2021 order (Paper 13). This
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`motion is joined by all parties, including Petitioners TCT Mobile (US) Inc., Huizou
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`TCL Mobile Communication Co. Ltd., and Shenzen TCL Creative Cloud
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`Technology Co., Ltd., (“Petitioners”) and Patent Owner Ancora Technologies, Inc.
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`(“Patent Owner”).
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`Terminating this proceeding is within the Board’s discretion. Exercising that
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`discretion here would conserve judicial resources and promote the strong policy
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`reasons that favor settlement.
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`Related proceedings, with pending motions for joinder, should not prevent the
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`Board from terminating this proceeding. Each of the joinder petitioners could have
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`filed their petition sooner, but instead waited to join this instituted proceeding. The
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`art asserted in this matter and the joinder petitions has been known to accused
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`infringers of the ’941 patent since at least 2015. Their delay also makes every one
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`of the joinder petitioners statutorily barred from filing a petition for inter partes
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`review.
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`II.
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`PUBLIC POLICY FAVORS TERMINATING THIS PROCEEDING
`The Board has discretion to terminate inter partes review proceedings after
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`1
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`IPR2020-01609
`Patent No. 6,411,941
`the parties file a settlement agreement. 35 U.S.C. § 317(a); see also 37 C.F.R.
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`§ 42.72. “There are strong public policy reasons to favor settlement between the
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`parties to a proceeding.” PTAB Consolidated Trial Practice Guide, at 86 (Nov.
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`2019), available at https://www.uspto.gov/TrialPracticeGuideConsolidated. The
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`Board therefore terminates proceedings “after the filing of a settlement agreement,
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`unless the Board already has decided the merits of the proceeding.” Id.
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`Termination of this proceeding is proper for at least the following reasons.
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`This proceeding is at an early stage, and the Board has not decided the merits of the
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`proceeding. 35 U.S.C. § 317(a); PTAB Consolidated Trial Practice Guide, at 86. The
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`Board issued its institution decision on February 16, 2021, which is preliminary. See
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`St. Jude Med., Cardiology Div., Inc. v. Volcano Corp., 749 F.3d 1373, 1375–76 (Fed.
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`Cir. 2014) (“the Director’s decision whether to institute a proceeding” differs from
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`a “decision with respect to patentability”). Patent Owner discovery has only just
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`begun and Ancora has not yet presented evidence, including expert testimony. No
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`motions are outstanding in this proceeding. Each of these facts supports terminating
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`this proceeding.
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`The parties jointly request termination. The parties reached the mutual
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`decision to settle this proceeding and their related district court litigation regarding
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`the ’941 patent. Settlement discussions were ongoing between the parties and nearly
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`concluded prior to the Board’s institution decision. The parties agree that settlement
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`2
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`IPR2020-01609
`Patent No. 6,411,941
`of their disputes promotes efficiency and will minimize unnecessary costs.
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`Terminating this proceeding will consequently preserve judicial resources and
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`enables the parties to minimize the cost of litigation.
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`No public interest or other factors weigh against termination of this
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`proceeding. Related district court proceedings have been filed against the ’941
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`patent, none of which will be affected by termination of this case. District court jury
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`trials will commence in April 2021 and June 2021, between Patent Owner and third-
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`party defendants Samsung and LG Electronics, respectively. LG has disclosed expert
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`opinions based on the same grounds asserted in this proceeding. The validity of the
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`’941 patent therefore will be addressed by the district court faster than the Board
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`could issue a final written decision in this or any of the related joinder proceedings
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`(IPR2020-00581, IPR2020-00583, IPR2020-00663).
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`Finally, the parties executed a confidential settlement agreement to terminate
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`this proceeding. The settlement agreement is being submitted concurrently herewith.
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`(See Ex. 2005.) The parties certify that there are no collateral agreements or
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`understandings made in connection with, or in contemplation of, the termination of
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`the proceeding. In accordance with 35 U.S.C. § 317 and 37 C.F.R. § 42.74(b), also
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`submitted concurrently herewith is a joint request that the settlement agreement be
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`treated as business confidential information, be kept separate from the file of the
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`involved patent, and be made available only to the Federal Government agencies on
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`3
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`IPR2020-01609
`Patent No. 6,411,941
`written request, or to any person on showing of good cause under 35 U.S.C. § 317
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`and 37 C.F.R. § 42.74(c).
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`For all of the above reasons, the Board should terminate this proceeding to
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`promote settlement and minimize unneeded expenditure of the Board’s resources.
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`III. PENDING TIME-BARRED JOINDER PETITIONS SHOULD NOT
`DELAY TERMINATION
`The Board should terminate this proceeding without waiting to decide
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`motions for joinder pending in related proceedings. Immediate termination furthers
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`the “strong policy reasons to favor settlement,” notwithstanding the time-barred
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`petitions and motions for joinder filed in related joinder proceedings. See ZTE (USA)
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`LLC, v. Seven Networks, LLC, Case No. IPR 2019-00460, paper 15 (PTAB Feb. 28,
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`2019) (denying ZTE’s request for rehearing of the order terminating the proceedings
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`it sought to join). Here, Patent Owner and Petitioner settled ongoing litigation to
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`avoid unnecessary litigation costs. Shortly after Patent Owner and Petitioner settled
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`their dispute, three petitioners filed substantively identical petitions against the ’941
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`patent, with motions for joinder with this proceeding: HTC in IPR2021-00570, LG
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`in IPR2021-00581, and Samsung in IPR2021-00583. A fourth was later filed by
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`Sony Mobile Communications in IPR2021-00663. Policy supports immediate
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`termination of this proceeding, notwithstanding these third-party actions. These
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`joinder proceedings will delay the instant proceeding, and the post-settlement me-
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`too petitions in the joinder proceedings are demonstrably subject to discretionary
`4
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`IPR2020-01609
`Patent No. 6,411,941
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`denial under the Board’s precedent.
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`Complete termination of this proceeding is appropriate, notwithstanding a
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`pending motion for joinder by a time-barred petitioner. For example, in Mylan
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`Techs., Inc. v. MonoSol Rx, LLC, IPR2017-00200, paper 23 (PTAB Oct. 6, 2017),
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`the Board fully terminated the proceeding despite the pending joinder request by the
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`time-barred petitioner in Par Pharma., Inc. v. MonoSol Rx, LLC, IPR2017-01557,
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`paper 4 (PTAB June 9, 2017). The Board denied Par’s request to have their time-
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`barred petition and motion for joinder decided before the Board decided whether to
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`terminate. Mylan, paper 22 at 3. The Board specifically noted that “there is no
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`guarantee that such filings will be considered prior to a termination of the proceeding
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`sought to be joined.” Mylan, paper 22 at 2–3. In Dell Inc. v. Chrimar Sys., Inc.,
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`IPR2016-00569, paper 40 (PTAB Jan. 20, 2017), the Board also fully terminated
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`despite the pending joinder request in Aerohive Networks, Inc. v. Chrimar Sys., Inc.,
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`IPR2016-01757, paper 3 (PTAB Sep. 8, 2016).
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`Immediate and complete termination of this entire proceeding is appropriate
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`and consistent with the Board’s discretion to terminate. See also ZTE USA, Inc. v.
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`Parthenon Unified Memory Architecture LLC, Case No. IPR2016-00664, paper 10
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`at 3 (PTAB June 8, 2016); LG Elec., Inc. v. Cellular Commc'ns Equip. LLC, Case
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`No. IPR2016-00711, paper 7 at 1−2 (PTAB May 13, 2016). In each of the ZTE and
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`LG Electronic cases, the Board terminated immediately—notwithstanding third-
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`5
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`IPR2020-01609
`Patent No. 6,411,941
`party petitions and motions for joinder filed in related proceedings. Terminating only
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`the Petitioner would delay this proceeding for at least two months and possibly more.
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`Patent owner discovery had just begun when the parties settled, without any progress
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`on depositions. This proceeding will be at a standstill until the Board decides
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`whether to institute the related joinder proceedings. Discovery cannot continue in
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`this proceeding without a petitioner to defend depositions, for example. This delay
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`would prevent the Board from concluding this proceeding within one year of
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`institution.
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`Petitioners in the related joinder proceedings are statutorily barred from
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`petitioning for inter partes review. 35 U.S.C. § 315(b). Ancora filed a complaint on
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`December 15, 2016 against HTC for infringement of the ’941 patent. Ancora
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`Technologies, Inc. v. HTC America, Inc., No. 2:16-cv-01919 (W.D. Wash.). Ancora
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`served the complaint on HTC on December 27, 2016, which was more than a year
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`before HTC filed its petition on February 19, 2021 in IPR2021-00570.
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`Ancora filed a complaint on June 21, 2019 against Samsung for infringement
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`of the ’941 patent. Ancora Technologies, Inc. v. Samsung Electronics Co., Ltd., No.
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`6:19-cv-00385 (W.D. Tex.). Ancora served the complaint on Samsung on June 25,
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`2019, which was more than a year before Samsung filed its petition on February 19,
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`2021 in IPR2021-00583.
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`Ancora also filed a complaint on June 21, 2019 against LG for infringement
`
`6
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`
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`IPR2020-01609
`Patent No. 6,411,941
`of the ’941 patent. Ancora Technologies, Inc. v. LG Electronics, Inc., No. 6:19-cv-
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`00384 (W.D. Tex.). Ancora served the complaint on LG on June 25, 2019, which
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`was more than a year before LG filed its petition on February 23, 2021 in IPR2021-
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`00581.
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`Ancora filed a complaint on September 11, 2019 against Sony for
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`infringement of the ’941 patent. Ancora Technologies, Inc. v. Sony, Corp., No. 1:19-
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`cv-01703 (D. Del.). Ancora served the complaint on Sony on September 12, 2019,
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`which was more than a year before LG filed its petition on March 15, 2021 in
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`IPR2021-00663. This is nearly a full month after the parties in this proceeding settled
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`their dispute.
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`Lastly, Ancora filed a complaint on September 12, 2019 against Lenovo
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`(United States) Inc. for infringement of the ’941 patent. Ancora Technologies, Inc.
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`v. Lenovo Group LTD., No. 1:19-cv-01712 (D. Del.). Ancora served the complaint
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`on Lenovo (United States) Inc. on September 16, 2019. Lenovo had the opportunity
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`to file a petition for inter partes review, but has not, and is now time barred.
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`The ’941 patent has already withstood serial challenges before the Board and
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`in the federal courts. The ’941 patent was involved in ex parte Reexamination No.
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`90/010,560, in which patentability of claims 1–19 was confirmed without
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`amendments. (Ex. 1001 at 8–9 (ex parte reexamination certificate).) District court
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`litigation over the ’914 patent has been ongoing since 2014. This litigation history
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`7
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`IPR2020-01609
`Patent No. 6,411,941
`includes two appeals to the Federal Circuit in which the appeals court affirmed
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`validity of the ’941 patent. Ancora Techs., Inc. v. Apple, Inc., 774 F.3d 732, 737
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`(Fed. Cir. 2014) (affirming that the terms “volatile memory” and “non-volatile
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`memory” are not indefinite); Ancora Techs., Inc. v. HTC Am., Inc., 908 F.3d 1343
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`(Fed. Cir. 2018) (reversing district court, holding the claims are not invalid under
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`§ 101). Litigation between Patent Owner and each of the joinder petitioners and
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`Lenovo are ongoing. Patent Owner has not filed any complaints since its September
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`12, 2019 complaint filed against Lenovo. The pending time-barred motions for
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`joinder are a last-ditch effort by accused infringers. These petitioners should have
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`filed sooner if they wanted review of the ’941 patent on the grounds they now
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`belatedly assert. The Board should terminate this proceeding without delay.
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`IV. CONCLUSION
`For at least the foregoing reasons, the parties jointly request immediate and
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`complete termination of this proceeding.
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`8
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`
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`IPR2020-01609
`Patent No. 6,411,941
`Respectfully submitted,
`
`By: /John P. Schnurer/
`John P. Schnurer
`Counsel
`for Petitioners *except on
`matters adverse to HTC
`
`By: /Bradford A. Cangro/
`Bradford A. Cangro
`Counsel for Petitioners *only on matters
`adverse to HTC
`
`By: /Nicholas T. Peters/
`Nicholas T. Peters
`Reg. No. 53,456
`Counsel for Patent Owner
`
`
`
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`
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`Dated: April 5, 2021
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`
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`
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`9
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`IPR2020-01609
`Patent No. 6,411,941
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`CERTIFICATE OF SERVICE
`
`I hereby certify that on this April 5, 2021, a copy of the Joint Motion to
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`Terminate Proceeding Pursuant to U.S.C. § 317 and 37 C.F.R. § 42.74 was served
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`by electronic mail upon the following:
`
`John P. Schnurer
`Yun (Louise) Lu
`Kyle R. Canavera
`
`PerkinsServiceTCL-Ancora-IPR@perkinscoie.com
`
`Perkins Coie LLP
`11452 El Camino Real, Suite 300
`San Diego, CA 92130
`Tel.: 858-720-5700
`Fax.: 858-720-5799
`
`
`Bradford Cangro
`
`bradford.cangro@pvuslaw.com
`
`PV LAW LLP
`5335 Wisconsin Avenue, NW, Suite 440
`Washington, DC 20015-2052
`Tel.: +1.202.869.4667
`Fax: +1.202.888.3163
`
`
`
`Dated: April 5, 2021
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`Respectfully submitted,
`
`
`
`
`
`
`
`
`By: /Nicholas T. Peters /
`Nicholas T. Peters
`Reg. No. 53,456
`Counsel for Patent Owner
`
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