UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ADVANCED MICRO DEVICES, INC.
`Petitioner
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`v.
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`BROADCOM CORPORATION
`Patent Owner
`____________
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`CASE IPR2017-01183
`U.S. PATENT NO. 7,720,294
`____________
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`JOINT MOTION TO DISMISS PETITION
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`ADVANCED MICRO DEVICES, INC.
`Petitioner
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`v.
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`BROADCOM CORPORATION
`Patent Owner
`____________
`
`CASE IPR2017-01183
`U.S. PATENT NO. 7,720,294
`____________
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`JOINT MOTION TO DISMISS PETITION
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`Joint Motion to Dismiss Petition
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`The Board authorized the parties to file a joint motion to dismiss the Petition
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`in this case on August 29, 2017. The parties agree that neither party will be
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`prejudiced by the dismissal, that the dismissal is in the interests of efficiency and
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`judicial and administrative economy. See 37 C.F.R. § 42.1(b). Accordingly, the
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`parties hereby move for dismissal of the pending Petition.
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`I.
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`BACKGROUND
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`On June 6, 2016, Patent Owner filed a complaint in U.S. district court
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`alleging that Sony Corporation infringed several patents (including the ’294
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`Patent) by virtue of Sony’s inclusion of Petitioner’s products into Sony’s products.
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`See, Broadcom Corp. v. Sony Corp., Case. No. 8:16-cv-01052 (C.D. Cal.).
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`Petitioner was not named as a party to that litigation, and was not served with a
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`complaint. However, because Patent Owner’s infringement theories addressed the
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`functionality of Petitioner’s products, Petitioner independently decided to file a
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`Petition challenging the validity of the ’294 Patent.
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`Patent Owner settled its litigation with Sony, and there is no other pending
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`litigation in which Patent Owner alleges that any party infringes the ’294 Patent
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`based on the functionality of Petitioner’s products. Accordingly, the parties
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`conferred and agreed that it is in both parties’ interest that the current Petition be
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`Joint Motion to Dismiss Petition
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`dismissed given that there is no current dispute between the parties.1 Ex. 1009.
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`II. ARGUMENT
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`In addition to both parties requesting that the Board grant this Motion to
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`Dismiss, there are a number of other factors that weigh in favor of dismissing the
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`pending Petition. First, the above-captioned IPR is in its preliminary phase. While
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`Patent Owner has filed a preliminary response, the Board has yet to reach the
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`merits and issue a decision on institution. In similar circumstances involving IPRs
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`at such an early juncture, the Board has previously granted motions to dismiss
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`using its authority under at least 37 C.F.R. §§ 42.5 and 42.71(a). See, e.g.,
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`Samsung Elec. Co. LTD v. Nvidia Corp., IPR2015-01270, Paper 12 at pp. 3-4
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`(PTAB December 9, 2015) (dismissing Petition even over the patent owner’s
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`objection).
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`Second, dismissal of the Petition in the above-captioned IPR will preserve
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`the Board’s resources and the parties’ resources. See 37 C.F.R. § 42.1(b). The
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`requested dismissal would relieve the Board of the substantial time and resources
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`required to consider the merits, issue an institution decision, and proceed through
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`1 Although it is possible that, at some point in the future, Petitioner may file
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`another Petition seeking inter partes review of the challenged patent, the parties do
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`not currently anticipate this will occur.
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`- 2 -
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`Joint Motion to Dismiss Petition
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`trial (if instituted) when there is no current dispute between the parties. Moreover,
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`granting this Motion to Dismiss would relieve the parties of the substantial expense
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`in preparing responses and replies, presenting expert testimony, conducting cross-
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`examination, and participating in an oral hearing, when there is no current dispute
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`between the parties. As such, it would be entirely proper for the Board to dismiss
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`the pending Petition “at this early junction[] to promote efficiency and minimize
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`unnecessary costs.” Samsung, IPR 2015-01270, Paper 12 at p. 4.
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`Lastly, dismissal of the Petition and termination of the above-captioned IPR
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`is a just and fair result. Again, all parties here agree that neither party would be
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`prejudiced by the dismissal. Moreover, the parties and the Board will benefit from
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`preserving the resources that would otherwise be expended if this Motion is
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`denied.
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`III. CONCLUSION
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`For at least these reasons, the parties respectfully request that the Board
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`grant this joint motion to dismiss the pending Petition.
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`Joint Motion to Dismiss Petition
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`Respectfully submitted,
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`Date:
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`August 30, 2017
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`Date:
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`August 30, 2017
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`/Brian W. Oaks/
`Brian W. Oaks (Reg. No. 44,981)
`98 San Jacinto Blvd., Suite 1500
`Austin, Texas 78701
`Phone: (512) 322-2500
`Facsimile: (512) 322-2501
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`ATTORNEY FOR PETITIONER
`ADVANCED MICRO DEVICES, INC.
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`/Daniel S. Young/
`Daniel S. Young (Reg. No. 48,277)
`SWANSON & BRATSCHUN, LLC
`8210 Southpark Terrace
`Littleton, CO 80120
`(303) 268-0066 (telephone)
`(303) 268-0065 (facsimile)
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`ATTORNEY FOR PATENT OWNER
`BROADCOM CORPORATION
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`- 4 -
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`Joint Motion to Dismiss Petition
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`CERTIFICATE OF SERVICE
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`In accordance with 37 C.F.R. §§ 42.6(e) and 42.105(b), the undersigned
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`certifies that on the 30th day of August, 2017, a complete and entire copy of
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`JOINT MOTION TO DISMISS PETITION was served on the patent owner via
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`electronic mail at the following correspondence addresses:
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`Daniel S. Young (dyoung@sbiplaw.com)
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`Chad E. King (cking@sbiplaw.com)
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`August 30, 2017
`Date
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` /Brian Oaks/
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`Brian Oaks (Reg. No. 44,981)
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`Jennifer Nall (Ref. No. 57,053)
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`98 San Jacinto Blvd., Suite 1500
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`Austin, Texas 78701
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`Attorneys for Petitioner,
`Advanced Micro Devices, Inc.
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`- 5 -
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