IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`BROADCOM LIMITED
`Petitioner,
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`v.
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`TESSERA ADVANCED TECHNOLOGIES, INC.
`Patent Owner
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`Case No. IPR2017-00736
`Patent No. 7,809,393
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`JOINT MOTION TO TERMINATE PURSUANT TO
`35 U.S.C. § 317 AND 37 C.F.R. §§ 42.72 AND 42.74
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`BROADCOM LIMITED
`Petitioner,
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`v.
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`TESSERA ADVANCED TECHNOLOGIES, INC.
`Patent Owner
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`Case No. IPR2017-00736
`Patent No. 7,809,393
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`JOINT MOTION TO TERMINATE PURSUANT TO
`35 U.S.C. § 317 AND 37 C.F.R. §§ 42.72 AND 42.74
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`Case No. IPR2017-00736
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`Pursuant to 35 U.S.C. § 317 and 37 C.F.R. §§ 42.72 and 42.74 and the
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`Board’s authorization of December 20, 2017, Petitioner Broadcom Limited
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`(“Broadcom”) and Patent Owner Tessera Advanced Technologies, Inc. (“Tessera”)
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`jointly move to terminate the present inter partes review proceeding in light of the
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`parties’ settlement of their dispute insofar as it relates to U.S. Patent No. 7,809,393
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`(“the ’393 patent”). The parties are filing, concurrently herewith, true copies of their
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`written Settlement Agreement (Confidential Exhibit 2005), License Agreement
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`(Confidential Exhibit 2006), and collateral agreements (Confidential Exhibits
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`2007-2010) (collectively, the “Agreements”) in connection with this matter as
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`required by the statute. The Agreements completely resolve all controversies
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`between the Patent Owner and Petitioner, including their dispute relating to the ’393
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`patent by resolving each of the following actions:
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`a)
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`b)
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`c)
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`d)
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`e)
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`Certain Semiconductor Devices, Semiconductor Device Packages, and
`Products Containing Same, Inv. No. 337–TA–1010 (U.S. Int’l Trade
`Comm’n);
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`Certain Wireless Audio Systems and Components Thereof, Inv. No.
`337-TA-1071 (U.S. Int’l Trade Comm’n);
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`Tessera, Inc., et al. v. Broadcom Corp., Civil Action No. 16-cv-00379
`(D. Del.);
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`Tessera, Inc., et al. v. Broadcom Corp., Civil Action No. 16-cv-00380
`(D. Del.)
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`Invensas Corp. v. Avago Technologies U.S. Inc., et al., Civil Action
`No. 16-cv-1033 (D. Del.);
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`1
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`Case No. IPR2017-00736
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`Tessera Inc., et al. v. Avago Technologies U.S. Inc., et al., Civil Action
`No. 16-cv-1034 (D. Del);
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`Broadcom Ltd., et al. v. DTS,
`2:17-cv-05935-AB-JEM (C.D. Cal.);
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`Inc., et al., Case No.
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`Invensas Corp. v. Mouser Electronics Inc., et al., Case No. 7 O 97/16
`(District Court Mannheim, Germany) / 6 U 46/17 (Appellate Court
`Karlsruhe, Germany),
`including all corresponding enforcement
`proceedings;
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`Invensas Corp. v. Broadcom Ltd., et al., Case No. 7 O 98/16 (District
`Court Mannheim, Germany) / 6 U 34/17 (Appellate Court Karlsruhe,
`Germany), including all corresponding enforcement proceedings;
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`Avago Technologies GmbH v. Invensas Corp., Case No. 2 Ni 43/16
`(EP) (Federal Patent Court, Germany);
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`Invensas Corp. v. Broadcom Ltd., et al., Case No. C/09/517267
`(District Court of The Hague, Netherlands); and
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`IPR2017-00170, -00171, -00736, -01470, -01486, -01645, -01646,
`-01649, -02201; and
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`IPR2018-00021, -00135, -00172.
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`f)
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`g)
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`h)
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`i)
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`j)
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`k)
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`l)
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`m)
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`The parties further jointly certify that there are no other agreements or
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`understandings, oral or written, between Tessera and Broadcom, including any
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`collateral agreements, made in connection with, or in contemplation of, the
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`termination of the present proceeding as set forth in 35 U.S.C. § 317(b).
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`The parties request that the Agreements (Confidential Exhibits 2005-2010) be
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`treated as business confidential information and kept separate from the file of the
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`’393 patent. This confidentiality request extends to the title of the Agreements,
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`2
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`Case No. IPR2017-00736
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`which are therefore identified as “Agreement 1,” “Agreement 2,” “Agreement 3,”
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`“Agreement 4,” “Agreement 5,” and “Agreement 6”on Patent Owner’s Updated
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`Exhibit List, filed herewith. A joint request to treat the Agreements as business
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`confidential information kept separate from the file of the involved patent pursuant
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`to 35 U.S.C. § 317(b) is being filed concurrently herewith.
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`Termination with Respect to Petitioner
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`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this
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`chapter shall be terminated with respect to any petitioner upon the joint request of
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`the petitioner and the patent owner, unless the Office has decided the merits of the
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`proceeding before the request for termination is filed.” This case was instituted on
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`July 27, 2017, and, as such, the Reply to Patent Owner’s Response is not due until
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`February 1, 2018, and the Office has not decided the merits of the proceeding.
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`Therefore, the requirement for terminating review is met. See Oracle Corp. v.
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`Clouding IP, LLC, IPR2013-00073, Paper No. 21, at *2 (P.T.A.B. July 22, 2013).
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`Termination with Respect to Inter Partes Review Proceeding
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`Moreover, in the circumstances of this case, the Board should exercise its
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`discretion to terminate the proceedings as to patent owner Tessera, without
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`rendering a final written decision. The Patent Owner’s Response to the petition has
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`been filed, but the Office has made no decision on the merits. As recognized by the
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`rules of practice before the Board:
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`3
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`Case No. IPR2017-00736
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`There are strong public policy reasons to favor settlement between the
`parties to a proceeding. The Board will be available to facilitate
`settlement discussions, and where appropriate, may require a
`settlement discussion as part of the 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.
`Patent Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012)
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`(emphasis added).
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`The public interest favors terminating this proceeding now, given the parties’
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`definitive settlement. As noted above, the Reply to Patent Owner’s Response is not
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`due until February 1, 2018, and, consequently, the Office has not issued any decision
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`on the merits. The parties have worked diligently to reach a private resolution of all
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`of their disputes relating to the ’393 patent. There will be no ongoing litigation
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`between the parties concerning the ’393 patent. A termination will further allow the
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`Board to conserve its resources here and in other IPR proceedings between the
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`parties, and focus the Board’s efforts on ongoing active disputes.
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`A joint motion to terminate generally “must (1) include a brief explanation as
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`to why termination is appropriate; (2) identify all parties in any related litigation
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`involving the patents at issue; (3) identify any related proceedings currently before
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`the Office, and (4) discuss specifically the current status of each such related
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`litigation or proceeding with respect to each party to the litigation or proceeding.”
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`4
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`Case No. IPR2017-00736
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`Heartland Tanning, Inc. v. Sunless, Inc., IPR2014-00018, Paper No. 26, at *2
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`(P.T.A.B. July 28, 2014). Each is addressed below:
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`As for requirement (1), termination is appropriate in this proceeding because
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`the parties have settled their dispute with respect to the ’393 patent before any
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`decision on the merits and have agreed to terminate this inter partes review, and
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`because of the strong public interest in conserving the Board’s resources and
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`facilitating private dispute resolutions. See Patent Office Trial Practice Guide, 77
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`Fed. Reg. 48756, 48768 (Aug. 14, 2012). The Board should terminate this
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`proceeding because, as stated above, the Agreements filed herewith completely
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`dispose of the controversy as between the parties, including with respect to the ’393
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`patent. The ’393 patent is not asserted against any party in any other forum. Thus,
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`no present case or controversy involving the ’393 patent exists in any forum.
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`Accordingly, the public interest would be better served for the Board to conserve its
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`resources by doing no further work on this matter and instead dedicate its limited
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`resources to other matters.
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`As for requirement (2), the ’393 patent is not involved in any related litigation
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`or other proceeding.
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`As for requirement (3), there are no related Inter Partes Review proceedings
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`for the ’393 patent currently before the U.S. Patent & Trademark Office. The parties
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`5
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`are also concurrently moving to terminate the following related proceedings before
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`the Patent Office:
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`Case No. IPR2017-00736
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`Patent No.
`6,043,699
`6,278,653
`6,856,007
`6,954,001
`6,046,076
`6,218,215
`6,080,605
`6,408,167
`6,972,480
`6,573,609
`6,684,060
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`IPR Case No.
`2017-00170
`2017-00171
`2017-01470
`2017-01486
`2017-01645
`2017-01646
`2017-01649
`2018-00021
`2018-00135
`2018-00172
`2017-02201
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`As for requirement (4), as discussed above, the Agreements fully resolve all
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`litigation and proceedings between the parties to this proceeding, with all related
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`joint motions to terminate or dismiss in pending actions on file and pending in each
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`action.
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`For the foregoing reasons, the parties jointly and respectfully request that the
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`instant proceeding be terminated.
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`6
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`Date: December 21, 2017
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`Case No. IPR2017-00736
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`Respectfully submitted,
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`By /Christopher K. Eppich/
`Andrea G. Reister
` Registration No. 36,253
`David A. Garr
` Registration No. 74,932
`COVINGTON & BURLING LLP
`One CityCenter, 850 Tenth Street, NW
`Washington, DC 20001
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`Christopher K. Eppich
` Registration No. 52,868
`Laura E. Muschamp
` Registration No. 45,693
`COVINGTON & BURLING LLP
`1999 Avenue of the Stars
`Los Angeles, CA 90067
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`Attorneys for Patent Owner
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`By /Kristopher L. Reed/
`Kristopher L. Reed
` Registration No.: 58,694
`Kilpatrick Townsend & Stockton LLP
`1400 Wewatta St., #600
`Denver, CO 80202
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`Attorney for Petitioner
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`7
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`Case No. IPR2017-00736
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6, I hereby certify that on this 21st day of
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`December 2017, the foregoing Joint Motion to Terminate Pursuant to 35 U.S.C.
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`§ 317 and 37 C.F.R. § 42.74 was served via email by agreement of the parties on the
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`following counsel of record for Petitioner:
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`Kristopher L. Reed (kreed@kilpatricktownsend.com)
`Shayne O’Reilly (soreilly@kilpatricktownsend.com)
`BC393IPR@ktslaw.com
`Kilpatrick Townsend & Stockton LLP
`1400 Wewatta St., #600
`Denver, CO 80202
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`Date: December 21, 2017
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` /Christopher K. Eppich/
`Christopher K. Eppich
`Registration No.: 52,868
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