Trials@uspto.gov
`571.272.7822
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` Paper No. 21
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` Entered: January 3, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`ASUSTEK COMPUTER, INC. and
`ASUS COMPUTER INTERNATIONAL,
`Petitioners,
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`v.
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`AVAGO TECHNOLOGIES GENERAL IP (SINGAPORE) PTE. LTD.,
`Patent Owner.
`____________
`
`Case IPR2016-00648
`Patent 6,188,835 B1
`____________
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`
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`Before GLENN J. PERRY, PATRICK R. SCANLON, and J. JOHN LEE,
`Administrative Patent Judges.
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`LEE, Administrative Patent Judge.
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`DECISION
`Motion to Terminate
`35 U.S.C. § 317 and 37 C.F.R. § 42.74
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`IPR2016-00648
`Patent 6,188,835 B1
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`On December 15, 2016, Petitioners ASUSTeK Computer, Inc. and
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`ASUS Computer International (collectively, “ASUS”), and Patent Owner
`Avago Technologies General IP Pte. Ltd. (“Avago”), filed a Joint Motion to
`Terminate the present proceeding concerning U.S. Patent No. 6,188,835 B1
`(“the ’835 Patent”). Paper 19 (“Motion” or “Mot.”). Under 35 U.S.C.
`§ 317(a), 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.”
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`As provided in 35 U.S.C. § 317(b), however, “[a]ny agreement or
`understanding . . . made in connection with, or in contemplation of, the
`termination” of the inter partes review “shall be in writing and a true copy
`of such agreement or understanding shall be filed in the Office.” See also
`37 C.F.R. § 42.74(b) (regulation implementing the above portion of
`§ 317(b)). This requirement extends as well to “any collateral agreements
`referred to in such agreement or understanding.” 35 U.S.C. § 317(b).
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`The Motion refers to an “agreement” between the parties, and the
`parties submit a series of e-mails exchanged between counsel for ASUS and
`counsel for Avago. Mot. 3 (citing Ex. 1011). The parties do not, however,
`represent or otherwise indicate that the submitted e-mail exchange is the
`only agreement or understanding made in connection with, or in
`contemplation of, the termination of the present proceeding. In other words,
`the parties have not addressed whether any other such agreement may exist
`that has not been filed, as required under § 317(b).
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`The e-mail exchange submitted by the parties also does not provide
`the necessary information. In an e-mail dated November 8, 2016, counsel
`for Avago made a “formal proposal” in which Avago agreed to “withdraw
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`IPR2016-00648
`Patent 6,188,835 B1
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`all claims of infringement of the ’835 Patent” from a pending district court
`case in exchange for ASUS’s agreement to “withdraw all claims of
`invalidity of the ’835 Patent from [the same district court case],” and to
`“terminate the [inter partes review] of the ’835 Patent.” Ex. 1011, 1–2. The
`parties also would “reserve all rights to seek costs” under the proposal. Id.
`at 2. The e-mail then indicates that, should ASUS agree to the proposal,
`counsel for Avago would “prepare the paperwork.” Id. After discussing
`additional terms in subsequent e-mails (i.e., dismissal of infringement
`allegations “with prejudice” and stipulating to extend deadlines in the
`present proceeding), counsel for ASUS states, “Yes that works and yes we
`can extend.” Id. at 1.
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`It is unclear what the “paperwork” mentioned by Avago’s counsel
`entailed. For example, it is unclear if Avago’s counsel was referring to a
`more formal document memorializing the terms discussed in the e-mail
`exchange, perhaps signed by the parties themselves (as opposed to their
`respective trial counsel*), and possibly including other terms not discussed
`in the e-mail exchange. The reference to “paperwork” at least raises the
`possibility that a collateral agreement could exist. In either case, such
`documents must be filed with the Board as required by § 317(b) and
`37 C.F.R. § 42.74(b). By failing to file all such documents, or at least
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`* The e-mail exchange involved the parties’ counsel of record in the present
`proceeding. ASUS’s counsel appears also to be counsel for ASUS in the
`related district court case implicated in the parties’ agreement. See Ex. 1010
`¶ 11. The parties do not indicate whether Avago’s counsel in the e-mail
`exchange also represents Avago in the district court case. It is unclear
`whether the e-mails alone present sufficient information of an effective
`agreement between the parties, and no written agreement signed by the
`parties themselves was submitted.
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`representing that no such agreements exist (e.g., because the e-mails
`constitute the only agreement between the parties), the parties’ Motion fails
`to comply with the requirements set forth in the statute and our rules.
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`For the above reasons, we must deny the Motion. Nonetheless, we
`authorize the parties to file a second motion to terminate the present
`proceeding to afford the parties an opportunity to correct the deficiencies in
`the Motion, including filing all agreements made in connection with, or in
`contemplation of, the termination of this proceeding. We further remind the
`parties that any settlement agreement may be requested to be kept separate
`from the public record to protect confidential business information, as
`provided under 37 C.F.R. § 42.74(c).
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`ORDER
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`It is
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`ORDERED that the Joint Motion to Terminate Proceeding (Paper 19)
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`is denied without prejudice; and
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`FURTHER ORDERED that the parties are authorized to file another
`joint motion to terminate the present proceeding under 35 U.S.C. § 317 and
`37 C.F.R. § 42.74, consistent with the requirements discussed in this
`decision.
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`IPR2016-00648
`Patent 6,188,835 B1
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`PETITIONER:
`Scott Stevens
`Derek S. Neilson
`ALSTON & BIRD LLP
`scott.stevens@alston.com
`derek.neilson@alston.com
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`PATENT OWNER:
`Kristopher L. Reed
`Matthew C. Holohan
`KILPATRICK TOWNSEND & STOCKTON LLP
`kreed@kilpatricktownsend.com
`mholohan@kilpatricktownsend.com
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