`Patent 7,073,158
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`XILINX, INC.,
`Petitioner
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`v.
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`QUICKCOMPILE IP, LLC,
`Patent Owner
`___________________
`
`Case IPR2016-00059
`Patent 7,073,158
`_____________________
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`
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`JOINT MOTION BY PETITIONER AND PATENT OWNER
`TO TERMINATE PROCEEDING PURSUANT TO
`35 U.S.C. § 317 and 37 C.F.R. § 42.74
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`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74, Petitioner Xilinx, Inc.
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`Case IPR2016-00059
`Patent 7,073,158
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`(“Xilinx”) and Patent Owner QuickCompile IP, LLC (“QuickCompile”) jointly
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`request termination of the inter partes review of U.S. Patent No. 7,073,158, Case
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`No. IPR2016-00059.
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`Generally, the Board expects that a proceeding will terminate after the filing
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`of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed.
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`Reg. 48,756, 48,768 (Aug. 14, 2012). The Board authorized filing of the instant
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`motion on April 26, 2016. Guidance as to the content of a motion to terminate is
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`provided in IPR2013-00428, Paper No. 56. There, the Board indicated that a joint
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`motion, such as this one, should (a) include a brief explanation as to why
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`termination is appropriate; (b) identify all parties in any related litigation involving
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`the patent at issue; (c) identify any related proceedings currently before the Office;
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`and (d) discuss specifically the current status of each such related litigation or
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`proceeding with respect to each party to the litigation or proceeding. Id. at 2. This
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`motion satisfies each of the above requirements and is accompanied by the Parties’
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`settlement agreement, as required by 35 U.S.C. § 317(b) and 35 C.F.R. § 42.74 (b).
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`Termination of Case No. IPR2016-00059 by the PTAB would be
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`appropriate. This case has not yet reached an institution decision, consequently the
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`Board has not decided the merits of the proceeding, and no final written decision
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`has been issued. Further, on April 20, 2016, the parties entered into a Settlement
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`Agreement (attached hereto as Exhibit 1025). The Settlement Agreement requires
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`Case IPR2016-00059
`Patent 7,073,158
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`both parties to terminate various disputes, including (i) Case No. IPR2016-00059,
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`and (ii) Patent Owner QuickCompile’s Civil Action QuickCompile IP, LLC v.
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`Xilinx, Inc., 2:15-cv-00820 (ED Texas), both involving U.S. Patent No. 7,073,158,
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`and no other actions are pending between these parties, with respect to this patent.
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`No other litigations are pending with respect to U.S. Patent No. 7,073,158.
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`Therefore, termination of Case No. IPR2016-00059 is appropriate because
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`(i) the case is at a sufficiently early stage of the trial, (ii) the parties have settled
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`their dispute, (iii) Patent Owner has agreed to dismiss the related District Court
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`litigation, and (iv) the parties to this case agree that this inter partes review should
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`be terminated.
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`As set forth in 35 U.S.C. § 317 and 37 C.F.R. § 42.74, the Settlement
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`Agreement between Xilinx and QuickCompile has been made in writing, and a true
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`and correct copy is being filed with the Patent Office as an exhibit to this Joint
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`Motion. As stated in 35 U.S.C. § 317(a), because Xilinx and QuickCompile
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`request this termination, no estoppel under 35 U.S.C. § 315(e) shall attach as to
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`Petitioner Xilinx. Further, a joint request to treat the Settlement Agreement as
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`business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. §
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`42.74(c) is filed concurrently herewith.
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`Therefore, Xilinx and QuickCompile respectfully request termination of the
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`Case IPR2016-00059
`Patent 7,073,158
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`
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`inter partes review of U.S. Patent No. 7,073,158, Case No. IPR2016-00059.
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`Respectfully submitted,
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`/David O’Dell/
`David M. O’Dell, Reg. No. 42,044
`HAYNES AND BOONE, LLP
`David.odell.ipr@haynesboone.com
`Attorneys for Petitioner Xilinx
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`
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`/Tarek Fahmi/
`Tarek Fahmi, Reg. No. 41,402
`ASCENDA LAW GROUP, PC
`tarek.fahmi@ascendalaw.com
`Attorney for QuickCompile
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`Dated: April 26, 2016
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`Case IPR2016-00059
`Patent 7,073,158
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`XILINX, INC.,
`Petitioner
`v.
`QUICKCOMPILE IP, LLC,
`Patent Owner
`
`Case IPR2016-00059
`Patent 7,073,158
`_____________________
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`CERTIFICATE OF SERVICE
`The undersigned certifies, in accordance with 37 C.F.R. § 42.205, that
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`service was made on the Patent Owner as detailed below.
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`Date of service April 26, 2016
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`Manner of service Email
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`Documents served Joint Motion To Terminate Proceeding and Its Supporting
`Exhibit(s)
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`Persons served Tarek N. Fahmi
`Holly J. Atkinson
`Ascenda Law Group, PC
`333 W San Carlos St., Suite 200
`San Jose, CA 95110
`patents@ascendalaw.com
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`/David O’Dell/
`David M. O’Dell
`Registration No. 42,044
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