UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`DELL INC.
`Petitioner,
`
`v.
`
`NXP B.V.
`Patent Owner
`_____________________________
`
`Case No. IPR2015-01082 (Patent No. 6,590,365)
`Case No. IPR2015-01083 (Patent No. 6,590,365)
`Case No. IPR2015-01271 (Patent No. 8,412,185)
`Case No. IPR2015-01306 (Patent No. 8,065,389)
`Case No. IPR2015-01308 (Patent No. 8,204,959)
`Case No. IPR2015-01349 (Patent No. 8,280,304)1
`_____________________________
`
`
`
`JOINT MOTION TO TERMINATE PROCEEDINGS
`PURSUANT TO 35 U.S.C. § 317
`
`
`
`
`
`
`
` 1
`
` Combined heading used with Board authorization provided on October 20, 2015.
`
`i
`
`
`
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`DELL INC.
`Petitioner,
`
`v.
`
`NXP B.V.
`Patent Owner
`_____________________________
`
`Case No. IPR2015-01082 (Patent No. 6,590,365)
`Case No. IPR2015-01083 (Patent No. 6,590,365)
`Case No. IPR2015-01271 (Patent No. 8,412,185)
`Case No. IPR2015-01306 (Patent No. 8,065,389)
`Case No. IPR2015-01308 (Patent No. 8,204,959)
`Case No. IPR2015-01349 (Patent No. 8,280,304)1
`_____________________________
`
`
`
`JOINT MOTION TO TERMINATE PROCEEDINGS
`PURSUANT TO 35 U.S.C. § 317
`
`
`
`
`
`
`
` 1
`
` Combined heading used with Board authorization provided on October 20, 2015.
`
`i
`
`
`
`IPR2015-01082, IPR2015-01083, IPR2015-01271,
`IPR2015-01306, IPR2015-01308, and IPR2015-01349
`TABLE OF CONTENTS
`
`I. Termination of the Inter Partes Review Proceedings Is Appropriate ................ 2
`II. Matters Related to the Inter Partes Reviews ....................................................... 5
`III. Conclusion ........................................................................................................... 6
`
`
`
`
`
`ii
`
`
`
`IPR2015-01082, IPR2015-01083, IPR2015-01271,
`IPR2015-01306, IPR2015-01308, and IPR2015-01349
`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74, Petitioner Dell Inc.
`
`(“Petitioner”) and Patent Owner NXP B.V. (“Patent Owner”) jointly move the
`
`Patent Trial and Appeal Board (“Board”) to terminate the following Inter Partes
`
`Review Proceedings in their entirety:
`
`IPR Case No. Patent No.2
`
`IPR2015-01082
`
`6,590,365
`
`IPR2015-01083
`
`6,590,365
`
`IPR2015-01271
`
`8,412,185
`
`IPR2015-01306
`
`8,065,389
`
`IPR2015-01308
`
`8,204,959
`
`IPR2015-01349
`
`8,280,304
`
`Following an October 15, 2015 request, the Board held a conference call
`
`with the parties on October 20, 2015. During that call, Petitioner and Patent
`
`Owner confirmed to the Board that the parties had reached a settlement agreement
`
`resolving all disputes between them involving the patents-at-issue noted above, and
`
`sought guidance and permission to file a motion to terminate these proceedings.
`
`As stated during the call, the Board authorized the parties to file a common joint
`
`
`
` 2
`
` U.S. Patent Nos. 6,590,365, 8,412,185, 8,065,389, 8,204,959, and 8,280,304 are
`
`collectively referred to herein as the “patents-at-issue.”
`
`1
`
`
`
`IPR2015-01082, IPR2015-01083, IPR2015-01271,
`IPR2015-01306, IPR2015-01308, and IPR2015-01349
`motion to terminate across all six proceedings.
`
`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), Petitioner and
`
`Patent Owner have filed herewith a true copy (including counterparts) of the
`
`confidential settlement agreement. There are no collateral agreements. Because
`
`the settlement agreement is confidential, the parties respectfully request that it be
`
`treated as business confidential information and kept separate from the underlying
`
`patent file, as provided in 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). The
`
`parties are concurrently filing a separate joint request to this effect.
`
`As stated in 35 U.S.C. § 317(a), because Petitioner and Patent Owner are
`
`jointly requesting this termination, no estoppel under 35 U.S.C. § 315(e) shall
`
`attach to Petitioner.
`
`I. TERMINATION OF THE INTER PARTES REVIEW
`PROCEEDINGS IS APPROPRIATE
`
`The statutory provision on a settlement relating to inter partes reviews
`
`provides that an inter partes review “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.” 35 U.S.C. § 317. It also provides that, “[i]f no petitioner remains in the
`
`inter partes review, the Office may terminate the review or proceed to a final
`
`written decision under section 318(a).” Id.
`
`Here, termination is proper under 35 U.S.C. § 317(a) because the parties
`
`2
`
`
`
`IPR2015-01082, IPR2015-01083, IPR2015-01271,
`IPR2015-01306, IPR2015-01308, and IPR2015-01349
`have resolved their dispute regarding the patents-at-issue and the Board has not
`
`decided the merits of the proceedings. In fact, the Board has yet to issue a
`
`determination on whether to institute any of the six Inter Partes Reviews.
`
`Moreover, because Dell is the only petitioner in any of the Inter Partes Review
`
`Proceedings, once each proceeding is terminated with respect to Dell, no petitioner
`
`will remain, and the Office may terminate the inter partes review in its entirety
`
`under Section 317. Furthermore, termination will save significant further
`
`expenditure of resources by the Board, and will further the purpose of IPR
`
`proceedings to provide an efficient and less costly alternative forum for patent
`
`disputes (including by encouraging settlement).
`
`Indeed, the Board has stated an expectation that proceedings such as these
`
`will be terminated after the filing of a settlement agreement: “[t]here are strong
`
`public policy reasons to favor settlement between the parties to a proceeding. …
`
`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. 35
`
`U.S.C. 317(a), as amended….” Office Patent Trial Practice Guide, 77 Fed. Reg.
`
`48,756, 48,768 (Aug. 14, 2012) (emphasis added). The Board’s expectation that
`
`such proceedings should be terminated is proper and well justified here.
`
`First, applying the Board’s expectation that these proceedings should be
`
`terminated promotes the Congressional goal of “establish[ing] a more efficient and
`
`3
`
`
`
`IPR2015-01082, IPR2015-01083, IPR2015-01271,
`IPR2015-01306, IPR2015-01308, and IPR2015-01349
`streamlined patent system” that, inter alia, “limit[s] unnecessary and
`
`counterproductive litigation costs.” See Changes to Implement Inter Partes Review
`
`Proceedings, Post-Grant Review Proceedings, and Transitional Program for
`
`Covered Business Method Patents, Final Rule, 77 Fed. Reg. 48680, 48680 (Aug.
`
`14, 2012). By permitting termination of review proceedings upon settlement of the
`
`disputes of all parties prior to a decision on the merits, the United States Patent and
`
`Trademark Office (“USPTO”) provides a measure of certainty as to the outcome of
`
`such proceedings – helping to promote settlements and creating a timely, cost-
`
`effective alternative to litigation.
`
`Second, applying the Board’s expectation that these proceedings should be
`
`terminated is also consistent with the adjudicatory nature of inter partes review
`
`proceedings recognized by the Board and the Federal Circuit, as contrasted with
`
`the examinational nature of the inter partes reexamination proceedings they
`
`replaced. See, e.g., Idle Free Systems Inc. v. Bergstrom Inc., IPR2012-00027,
`
`Paper 26 at 6 (June 11, 2013) (“An inter partes review is more adjudicatory than
`
`examinational, in nature.”); Abbott Labs v. Cordis Corp., 710 F.3d 1318, 1326
`
`(Fed. Cir. 2013) (“In 2011, Congress replaced inter partes reexamination with a
`
`new proceeding called inter partes review.… The purpose of this reform was to
`
`‘convert[] inter partes reexamination from an examinational to an adjudicative
`
`proceeding,’ ….”) (citations omitted). Once termination is effected, there will be
`
`4
`
`
`
`IPR2015-01082, IPR2015-01083, IPR2015-01271,
`IPR2015-01306, IPR2015-01308, and IPR2015-01349
`no counter-party in these proceedings and thus, no need for an adjudicatory
`
`proceeding like inter partes review. For at least these reasons, the parties
`
`respectfully request that the Board terminate all six Inter Partes Review
`
`Proceedings in their entirety
`
`II. MATTERS RELATED TO THE INTER PARTES REVIEWS
`
`As set forth below, the five patents-at-issue in the Inter Partes Reviews are
`
`the subject of an International Trade Commission (“ITC”) investigation and a
`
`District Court litigation. Both the ITC investigation and District Court litigation
`
`involve Patent Owner and Petitioner. Beyond the aforementioned Inter Partes
`
`Review Proceedings, there are no other petitions for inter partes review of the five
`
`patents-at-issue. Beyond the matters mentioned below, there are no other
`
`litigations involving the patents-at-issue. The settlement agreement has resolved
`
`all disputes between the parties involving the patents-at-issue.
`
`Patent Owner and Petitioner are parties to International Trade Commission
`
`Investigation No. 337-TA-950, captioned In re Certain Electronic Products,
`
`Including Products with Near Field Communication (“NFC”) System-Level
`
`Functionality and/or Battery Power-up Functionality, Component thereof, and
`
`Products Containing Same (the “950 Investigation”). The 950 Investigation
`
`involves all five patents-at-issue in the Inter Partes Review Proceedings and is
`
`covered by the settlement agreement. The parties filed a motion to terminate the
`
`5
`
`
`
`IPR2015-01082, IPR2015-01083, IPR2015-01271,
`IPR2015-01306, IPR2015-01308, and IPR2015-01349
`investigation on Thursday, October 15, 2015, which is expected to result in
`
`termination of the investigation with respect to Dell, the only Respondent in the
`
`950 Investigation.
`
`Patent Owner and Petitioner are also parties to a litigation in the U.S.
`
`District Court for the District of Delaware, captioned NXP B.V. v. Dell Inc., 1-15-
`
`cv-00146-RGA (“the Delaware litigation”). The Delaware litigation also involves
`
`all five patents-in-suit in the Inter Partes Review Proceedings and is covered by
`
`the settlement agreement. Patent Owner filed a motion to dismiss the Delaware
`
`litigation on Tuesday, October 20, 2015, which is expected to result in dismissal of
`
`the litigation with respect to Dell, the only defendant in the Delaware litigation.
`
`III. CONCLUSION
`
`Wherefore, Petitioner and Patent Owner respectfully request that the Board
`
`grant the parties’ Joint Motion to Terminate Case Numbers IPR2015-01082, -
`
`01083, -01271, -01306, -01308, -01349 in their entirety and grant the request to
`
`treat the settlement agreement between the parties as business confidential
`
`information.
`
`Petitioner and Patent Owner are available at the Board’s convenience to
`
`discuss these related matters in more detail or answer any additional questions
`
`raised by this joint motion.
`
`
`
`6
`
`
`
`IPR2015-01082, IPR2015-01083, IPR2015-01271,
`IPR2015-01306, IPR2015-01308, and IPR2015-01349
`
`
`
`
`
`
`
`
`
`
`
`October 21, 2015
`
`By: /Kevin J. Meek/ __________
`Kevin J. Meek (Lead Counsel)
`Reg. No. 33,738
`Baker Botts L.L.P.
`98 San Jacinto Blvd., Suite 1500
`Austin, Texas 78701
`P: 512-322-5471 / F: 512-322-3622
`kevin.meek@bakerbotts.com
`
`
`
`Lead Counsel for Petitioner
`
`
`
`Respectfully submitted,
`
`By: /J. Steven Baughman/
`J. Steven Baughman (Lead Counsel)
`Reg. No. 47,414
`ROPES & GRAY LLP
`2099 Pennsylvania Avenue, N.W.
`Washington, DC 20006-6807
`P: 202-508-4606 / F: 202-383-8371
`steven.baughman@ropesgray.com
`
`
`
`
`Lead Counsel for Patent Owner
`
`
`
`
`
`
`
`7
`
`
`
`IPR2015-01082, IPR2015-01083, IPR2015-01271,
`IPR2015-01306, IPR2015-01308, and IPR2015-01349
`CERTIFICATE OF SERVICE
`
`It is certified that a copy of JOINT MOTION TO TERMINATE
`
`PROCEEDINGS PURSUANT TO 35 U.S.C. § 317 is being served on counsel of
`
`record by filing this document through the Patent Review Processing System as
`
`well as by delivering a copy via email to the following attorneys of record for the
`
`Petitioner listed below:
`
`Kevin J. Meek
`kevin.meek@bakerbotts.com
`
`Paula D. Heyman
`paula.heyman@bakerbotts.com
`
`Blaine B. Bassett
`blaine.bassett@bakerbotts.com
`
`Brett J. Thompsen
`brett.thompsen@bakerbotts.com
`
`Valerie K. Barker
`valerie.barker@bakerbotts.com
`
`Jeffrey T. Quilici
`jeff.quilici@bakerbotts.com
`
`
`
`
`
`
`Dated: October 21, 2015
`
`
`
`
`
`
`
`
`
`
`
`
`By: /Daniel W. Richards/
`Daniel W. Richards
`ROPES & GRAY LLP
`
`
`8
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