IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`BROADCOM CORPORATION
`Petitioner,
`
`v.
`
`TESSERA, INC.
`Patent Owner
`
`Case No. IPR2017-01470
`Patent No. 6,856,007
`
`JOINT MOTION TO TERMINATE PURSUANT TO
`35 U.S.C. § 317 AND 37 C.F.R. §§ 42.72 AND 42.74
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`BROADCOM CORPORATION
`Petitioner,
`
`v.
`
`TESSERA, INC.
`Patent Owner
`
`Case No. IPR2017-01470
`Patent No. 6,856,007
`
`JOINT MOTION TO TERMINATE PURSUANT TO
`35 U.S.C. § 317 AND 37 C.F.R. §§ 42.72 AND 42.74
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case No. IPR2017-01470
`
`Pursuant to 35 U.S.C. § 317 and 37 C.F.R. §§ 42.72 and 42.74 and the
`
`Board’s authorization of December 20, 2017, Petitioner Broadcom Corporation
`
`(“Broadcom”) and Patent Owner Tessera, Inc. (“Tessera”) jointly move to terminate
`
`the present inter partes review proceeding in light of the parties’ settlement of their
`
`dispute insofar as it relates to U.S. Patent No. 6,856,007 (“the ’007 patent”). The
`
`parties are filing, concurrently herewith, true copies of their written Settlement
`
`Agreement (Confidential Exhibit 2006), License Agreement (Confidential Exhibit
`
`2007), and collateral agreements (Confidential Exhibits 2008-2011) (collectively,
`
`the “Agreements”) in connection with this matter as required by the statute. The
`
`Agreements completely resolve all controversies between the Patent Owner and
`
`Petitioner, including their dispute relating to the ’007 patent by resolving each of the
`
`following actions:
`
`a)
`
`b)
`
`c)
`
`d)
`
`e)
`
`Certain Semiconductor Devices, Semiconductor Device Packages, and
`Products Containing Same, Inv. No. 337–TA–1010 (U.S. Int’l Trade
`Comm’n);
`
`Certain Wireless Audio Systems and Components Thereof, Inv. No.
`337-TA-1071 (U.S. Int’l Trade Comm’n);
`
`Tessera, Inc., et al. v. Broadcom Corp., Civil Action No. 16-cv-00379
`(D. Del.);
`
`Tessera, Inc., et al. v. Broadcom Corp., Civil Action No. 16-cv-00380
`(D. Del.)
`
`Invensas Corp. v. Avago Technologies U.S. Inc., et al., Civil Action
`No. 16-cv-1033 (D. Del.);
`
`1
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case No. IPR2017-01470
`
`Tessera Inc., et al. v. Avago Technologies U.S. Inc., et al., Civil Action
`No. 16-cv-1034 (D. Del);
`
`Broadcom Ltd., et al. v. DTS,
`2:17-cv-05935-AB-JEM (C.D. Cal.);
`
`Inc., et al., Case No.
`
`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;
`
`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;
`
`Avago Technologies GmbH v. Invensas Corp., Case No. 2 Ni 43/16
`(EP) (Federal Patent Court, Germany);
`
`Invensas Corp. v. Broadcom Ltd., et al., Case No. C/09/517267
`(District Court of The Hague, Netherlands); and
`
`IPR2017-00170, -00171, -00736, -01470, -01486, -01645, -01646,
`-01649, -02201; and
`
`IPR2018-00021, -00135, -00172.
`
`
`
`
`
`
`
`
`
`
`
`f)
`
`g)
`
`h)
`
`i)
`
`j)
`
`k)
`
`l)
`
`m)
`
`
`The parties further jointly certify that there are no other agreements or
`
`understandings, oral or written, between Tessera and Broadcom, including any
`
`collateral agreements, made in connection with, or in contemplation of, the
`
`termination of the present proceeding as set forth in 35 U.S.C. § 317(b).
`
`The parties request that the Agreements (Confidential Exhibits 2006-2011) be
`
`treated as business confidential information and kept separate from the file of the
`
`’007 patent. This confidentiality request extends to the title of the Agreements,
`
`
`
`2
`
`
`
`Case No. IPR2017-01470
`
`which are therefore identified as “Agreement 1,” “Agreement 2,” “Agreement 3,”
`
`“Agreement 4,” “Agreement 5,” and “Agreement 6” on Patent Owner’s Updated
`
`Exhibit List, filed herewith. A joint request to treat the Agreements as business
`
`confidential information kept separate from the file of the involved patent pursuant
`
`to 35 U.S.C. § 317(b) is being filed concurrently herewith.
`
`Termination with Respect to Petitioner
`
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this
`
`chapter 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.” This case was just instituted
`
`on December 4, 2017, and, as such, the Office has not decided the merits of the
`
`proceeding. Therefore, the requirement for terminating review is met. See Oracle
`
`Corp. v. Clouding IP, LLC, IPR2013-00073, Paper No. 21, at *2 (P.T.A.B. July 22,
`
`2013).
`
`Termination with Respect to Inter Partes Review Proceeding
`
`Moreover, in the circumstances of this case, the Board should exercise its
`
`discretion to terminate the proceedings as to patent owner Tessera, without
`
`rendering a final written decision. As recognized by the rules of practice before the
`
`Board:
`
`
`
`3
`
`
`
`Case No. IPR2017-01470
`
`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)
`
`(emphasis added).
`
`The public interest favors terminating this proceeding now, given the parties’
`
`definitive settlement. Claim 1 was cancelled by Tessera pursuant to a statutory
`
`disclaimer under 35 U.S.C. § 253(a) filed with the Patent Office. As noted above,
`
`this proceeding was just instituted, the Patent Owner’s Response is not due to be
`
`filed until March 5, 2018, and, consequently, the Office has not issued any decision
`
`on the merits for the remaining challenged claims subject to trial. The parties have
`
`worked diligently to reach a private resolution of all of their disputes relating to the
`
`’007 patent. There will be no ongoing litigation between the parties concerning the
`
`’007 patent. A termination will further allow the Board to conserve its resources
`
`here and in other IPR proceedings between the parties, and focus the Board’s efforts
`
`on ongoing active disputes.
`
`A joint motion to terminate generally “must (1) include a brief explanation as
`
`to why termination is appropriate; (2) identify all parties in any related litigation
`
`involving the patents at issue; (3) identify any related proceedings currently before
`
`
`
`4
`
`
`
`Case No. IPR2017-01470
`
`the Office, and (4) discuss specifically the current status of each such related
`
`litigation or proceeding with respect to each party to the litigation or proceeding.”
`
`Heartland Tanning, Inc. v. Sunless, Inc., IPR2014-00018, Paper No. 26, at *2
`
`(P.T.A.B. July 28, 2014). Each is addressed below:
`
`As for requirement (1), termination is appropriate in this proceeding because
`
`the parties have settled their dispute with respect to the ’007 patent before any
`
`decision on the merits and have agreed to terminate this inter partes review, and
`
`because of the strong public interest in conserving the Board’s resources and
`
`facilitating private dispute resolutions. See Patent Office Trial Practice Guide, 77
`
`Fed. Reg. 48756, 48768 (Aug. 14, 2012). The Board should terminate this
`
`proceeding because, as stated above, the Agreements filed herewith completely
`
`dispose of the controversy as between the parties, including with respect to the ’007
`
`patent. The ’007 patent is not asserted against any party in any other forum. Thus,
`
`no present case or controversy involving the ’007 patent exists in any forum.
`
`Accordingly, the public interest would be better served for the Board to conserve its
`
`resources by doing no further work on this matter and instead dedicate its limited
`
`resources to other matters.
`
`As for requirement (2), as discussed above, the only parties to any related
`
`litigations involving the ’007 patent are Patent Owner Tessera, Inc.; Petitioner
`
`Broadcom Corporation; and Tessera Technologies, Inc., Invensas Corporation,
`
`
`
`5
`
`
`
`Case No. IPR2017-01470
`
`Broadcom Limited, Arista Networks, Inc., ARRIS International plc, ARRIS Group,
`
`Inc., ARRIS Technology, Inc., ARRIS Enterprises LLC, ARRIS Solutions, Inc.,
`
`Pace Ltd., Pace Americas, LLC, Pace USA, LLC, ASUSTeK Computer Inc., ASUS
`
`Computer International, Comcast Cable Communications, LLC, Comcast Cable
`
`Communications, Comcast Business Communications, LLC, HTC Corporation,
`
`HTC America, Inc., NETGEAR, Inc., Technicolor S.A., Technicolor USA, Inc.,
`
`Technicolor Connected Home USA LLC. Tessera Technologies, Inc., Invensas
`
`Corporation, and Tessera, Inc. are all subsidiaries of Xperi Corporation. Broadcom
`
`Corporation is a subsidiary of Broadcom Limited. Those litigations are now
`
`terminated or in the process of termination.
`
`As for requirement (3), there are no related Inter Partes Review proceedings
`
`for the ’007 patent currently before the U.S. Patent & Trademark Office. The parties
`
`are also concurrently moving to terminate the following related proceedings before
`
`the Patent Office:
`
`Patent No.
`6,043,699
`6,278,653
`7,809,393
`6,954,001
`6,046,076
`6,218,215
`6,080,605
`6,408,167
`
`IPR Case No.
`2017-00170
`2017-00171
`2017-00736
`2017-01486
`2017-01645
`2017-01646
`2017-01649
`2018-00021
`
`6
`
`
`
`
`
`Case No. IPR2017-01470
`
`Patent No.
`6,972,480
`6,573,609
`6,684,060
`
`IPR Case No.
`2018-00135
`2018-00172
`2017-02201
`
`
`
`As for requirement (4), as discussed above, the Agreements fully resolve all
`
`litigation and proceedings between the parties to this proceeding, with all related
`
`joint motions to terminate or dismiss in pending actions on file and pending in each
`
`action.
`
`For the foregoing reasons, the parties jointly and respectfully request that the
`
`instant proceeding be terminated.
`
`
`Date: December 21, 2017
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`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
`
`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
`
`
`7
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case No. IPR2017-01470
`
`
`
`
`
`
`
`Attorneys for Patent Owner
`
`
`By /George C. Beck/
`George C. Beck
` Registration No.: 38,072
`Andrew R. Cheslock
` Registration No.: 68,577
`Foley & Lardner LLP
`3000 K Street, NW, Suite 600
`Washington, DC 20007
`
`Attorneys for Petitioner
`
`8
`
`
`
`Case No. IPR2017-01470
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6, I hereby certify that on this 21st day of
`
`December 2017, the foregoing Joint Motion to Terminate Pursuant to 35 U.S.C.
`
`§ 317 and 37 C.F.R. § 42.74 was served via email by agreement of the parties on the
`
`following counsel of record for Petitioner:
`
`George C. Beck (gbeck@foley.com)
`Andrew R. Cheslock (acheslock@foley.com)
`Broadcom-Foley-IPR@foley.com
`Foley & Lardner LLP
`3000 K Street, NW, Suite 600
`Washington, DC 20007
`
`
`Date: December 21, 2017
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` /Christopher K. Eppich/
`Christopher K. Eppich
`Registration No.: 52,868
`
`
`
`
`
`
`
`
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
