UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.
`
`Petitioner
`
`v.
`
`ADVANCED SILICON TECHNOLOGIES LLC
`
`Patent Owner
`
`_____________________
`
`Case IPR2016-00897
`Patent 6,630,935
`
`_____________________
`
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.
`
`Petitioner
`
`v.
`
`ADVANCED SILICON TECHNOLOGIES LLC
`
`Patent Owner
`
`_____________________
`
`Case IPR2016-00897
`Patent 6,630,935
`
`_____________________
`
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`Inter Partes Review of U.S. Patent No. 6,630,935
`
`Petitioner Volkswagen Group of America, Inc. (“Petitioner”) and Patent
`
`Owner Advanced Silicon Technologies LLC. (“Patent Owner”) have entered into a
`
`confidential Agreement that resolves all underlying disputes between the parties,
`
`including IPR2016-00897 against U.S. Patent No. 6,630,935. The parties are
`
`concurrently filing a copy of the Agreement as Exhibit 1026 along with a request
`
`to treat it as Confidential Business Information under 37 C.F.R. § 42.74(c) and 35
`
`U.S.C. § 317(b), sealing it from the public absent a showing of good cause. The
`
`undersigned represents that there are no other agreements, oral or written, between
`
`the parties made in connection with, or in contemplation of, the termination of the
`
`present proceeding and that Exhibit 1026 represents a true and accurate copy of the
`
`agreement between the parties that resolves the present proceeding.
`
`Accordingly, pursuant to 35 U.S.C. § 317, 37 C.F.R. § 42.72 and § 42.74,
`
`and pursuant to the authorization to file this motion provided by the Board via
`
`email to the parties on August 10, 2016, Petitioner and Patent Owner jointly
`
`request termination of the present proceeding.
`
`Public policy favors terminating the present inter partes review proceeding.
`
`Congress and federal courts have expressed a strong interest in encouraging
`
`settlement in litigation. See, e.g., Delta Air Lines, Inc. v. August, 450 U.S. 346, 352
`
`(1981) (“The purpose of [Fed. R. Civ. P.] 68 is to encourage the settlement of
`
`litigation.”); Bergh v. Dept. of Transp., 794 F.2d 1575, 1577 (Fed. Cir. 1986)
`
`
`
`- 1 -
`
`
`
`Inter Partes Review of U.S. Patent No. 6,630,935
`
`(“The law favors settlement of cases.”), cert. denied, 479 U.S. 950 (1986). The
`
`Federal Circuit places a particularly strong emphasis on settlement. See Cheyenne
`
`River Sioux Tribe v. U.S., 806 F.2d 1046, 1050 (Fed. Cir. 1986) (noting that the
`
`law favors settlement to reduce antagonism and hostility between parties). And, the
`
`Board’s Trial Practice Guide stresses that “[t]here are strong public policy reasons
`
`to favor settlement between the parties to a proceeding.” Office Patent Trial
`
`Practice Guide, 77 Fed. Reg. 48,756, 46,768 (Aug. 14, 2012).
`
`Additionally, termination of the present proceeding at this stage, in view of
`
`the Agreement, is appropriate as the Board has not yet “decided the merits of this
`
`proceeding.” See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48756,
`
`48768 (Aug. 14, 2012); see also 35 U.S.C. § 317. Indeed, this proceeding has not
`
`yet been instituted, and no Motions or Petitions are currently outstanding. The
`
`USPTO can conserve its resources through terminating the proceedings now,
`
`removing the need for the Board to further consider the arguments, to issue an
`
`Institution Decision, and to render a Final Written Decision. Furthermore, no other
`
`party’s rights will be prejudiced by the termination of this proceeding.
`
`Moreover, no additional disputes remain between Petitioner and Patent
`
`Owner involving U.S. Patent No. 6,630,935 as the Agreement also resolves the two
`
`pending litigations between the parties: Certain Computing or Graphics Systems,
`
`Components Thereof, and Vehicles Containing Same, Inv. No. 337-TA-984 and
`
`
`
` - 2 -
`
`
`
`Inter Partes Review of U.S. Patent No. 6,630,935
`
`Advanced Silicon Technologies, LLC v. Volkswagen AG, 1:15-cv-01181 (D. Del.).
`
`Additionally, the parties do not contemplate any further litigation or proceedings
`
`related to U.S. Patent No. 6,630,935.
`
`Lastly, in accordance with the guidelines established by the Board in
`
`Heartland Tanning, Inc. v. Sunless, Inc., the parties hereby identify, and set forth
`
`the status of, all other related litigation involving U.S. Patent No. 6,630,935. See
`
`IPR2014-00018, PaperNo. 26, at *2 (P.T.A.B. July 28, 2014).
`
`In the above-identified ITC Investigation, U.S. Patent No. 6,630,935 was
`
`also asserted against respondents Harman International Industries Incorporated, et
`
`al., FUJITSU TEN LIMITED, et al., Texas Instruments Incorporated, Renesas
`
`Electronics Corporation, et al., NVIDIA Corporation, Bayerische Motoren Werke
`
`AG, et al., Honda Motor Co., Ltd., et al., and Toyota Motor Company, et al.
`
`Respondent NVIDIA Corporation has been terminated from the ITC Investigation,
`
`and joint motions to terminate the ITC investigation are pending for all other
`
`respondents.
`
`The status of all other related district court litigation involving U.S. Patent
`
`No. 6,630,935 is as follows:
`
`Case Caption
`
`Current Status
`
`Advanced Silicon Technologies LLC v.
`Harman International Industries
`Incorporated, et al., C.A. No. 1:15-cv-
`1173-RGA, United States District Court
`
`Administratively closed in view of ITC
`Inv. No. 337-TA-984.
`
`
`
` - 3 -
`
`
`
`Inter Partes Review of U.S. Patent No. 6,630,935
`
`Case Caption
`
`Current Status
`
`for the District of Delaware (filed on
`December 21, 2015)
`
`Advanced Silicon Technologies LLC v.
`FUJITSU TEN LIMITED, C.A. No.
`1:15-cv-1174-RGA, United States
`District Court for the District of
`Delaware (filed on December 21, 2015)
`
`Advanced Silicon Technologies LLC v.
`Texas Instruments Incorporated, C.A.
`No. 1:15-cv-1175-RGA, United States
`District Court for the District of
`Delaware (filed on December 21, 2015)
`
`Advanced Silicon Technologies LLC v.
`Renesas Electronics Corporation, et al.,
`C.A. No. 1:15-cv-1176-RGA, United
`States District Court for the District of
`Delaware (filed on December 21, 2015)
`
`Advanced Silicon Technologies LLC v.
`NVIDIA Corporation, C.A. No. 1:15-cv-
`1177-RGA, United States District Court
`for the District of Delaware (filed on
`December 21, 2015)
`
`Advanced Silicon Technologies LLC v.
`Bayerische Motoren Werke AG, et al.,
`C.A. No. 1:15-cv-1178-RGA, United
`States District Court for the District of
`Delaware (filed on December 21,2015)
`
`Advanced Silicon Technologies LLC v.
`Honda Motor Co., Ltd., et al., C.A. No.
`1:15-cv-1179- RGA, United States
`District Court for the District of
`Delaware (filed on December 21, 2015)
`
`Administratively closed in view of ITC
`Inv. No. 337-TA-984.
`
`Administratively closed in view of ITC
`Inv. No. 337-TA-984.
`
`Administratively closed in view of ITC
`Inv. No. 337-TA-984.
`
`Dismissed with prejudice.
`
`Administratively closed in view of ITC
`Inv. No. 337-TA-984.
`
`Administratively closed in view of ITC
`Inv. No. 337-TA-984.
`
`
`
` - 4 -
`
`
`
`Inter Partes Review of U.S. Patent No. 6,630,935
`
`Case Caption
`
`Current Status
`
`Advanced Silicon Technologies LLC v.
`Toyota Motor Corporation, et al., C.A.
`No. 1: 15-cv-1180-RGA, United States
`District Court for the District of
`Delaware (filed on December 21, 2015)
`
`Administratively closed in view of ITC
`Inv. No. 337-TA-984.
`
`
`Again, the confidential Agreement entered into by the parties resolves all
`
`
`
`underlying disputes between Petitioner and Patent Owner, including IPR2016-
`
`00897. For at least this reason, as well as the other reasons set forth above, the
`
`parties respectfully request that the Board terminate Inter Partes Review of U.S.
`
`Patent No. 6,630,935, Case No. IPR2016-00897.
`
`
`
`
`
`
`
`
`
`
`
` - 5 -
`
`
`
`Inter Partes Review of U.S. Patent No. 6,630,935
`
`Date: August 16, 2016
`
`
`
`Respectfully submitted by:
`
`/ Michael D. Specht /
`_______________________________
`Jonathan Tuminaro (Registration No. 61,327)
`Michael D. Specht (Registration No. 54,463)
`Daniel E. Yonan (Registration No. 53,812)
`Sterne, Kessler, Goldstein & Fox PLLC
`1100 New York Avenue, N.W.
`Washington, D.C.20005-3934
`(202) 371-2600
`Attorneys for Petitioner
`
`
`
`/s/ William A. Meunier
`________________________________
`William A. Meunier (Registration No. 41,193)
`Michael T. Renaud (Registration No. 44,299)
`Adam S. Rizk (Registration No. 66,867)
`MINTZ, LEVIN, COHEN, FERRIS,
`GLOVSKY AND POPEO, P.C.
`One Financial Center
`Boston, MA 02111
`Telephone: (617) 348-1615
`Facsimile: (617) 542-2241
`AdSilTechIPRs@mintz.com
`
`
` - 6 -
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Inter Partes Review of U.S. Patent No. 6,630,935
`
`CERTIFICATE OF SERVICE (37 C.F.R. §§ 42.6 (e), 42.105(a))
`
`The undersigned hereby certifies that the above-captioned JOINT MOTION TO
`
`
`
`TERMINATE PROCEEDING PURSUANT TO 35 U.S.C. § 317 and its associated
`
`exhibits were served electronically via e-mail on August 16, 2016, in its entirety on the
`
`following counsel of record for Patent Owner:
`
`William A. Meunier (Lead Counsel)
`Michael T. Renaud (Back-up Counsel)
`Adam S. Rizk (Back-up Counsel)
`MINTZ, LEVIN, COHEN, FERRIS, GLOVSKY, AND POPEO, P.C.
`AdSilTechIPRs@mintz.com
`
`
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/ Michael D. Specht /
`______________________________
`Jonathan Tuminaro (Registration No. 61,327)
`Michael D. Specht (Registration No. 54,463)
`Daniel E. Yonan (Registration No. 53,812)
`Attorneys for Petitioner
`
`
`
`Date: August 16, 2016
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`
`
`
`
`
`
`
`
`
`
`
` - 7 -
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
