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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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`LG Electronics, Inc.,
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`Petitioner
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`v.
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`Broadcom Corporation,
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`Patent Owner
`_____________________
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`Case IPR2017-01544
`Patent No. 7,342,967
`_____________________
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`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317 and 37 C.F.R. § 42.74
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`Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74, and the Board’s email
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`correspondence of April 6, 2018, authorizing filing of this paper, Petitioner LG
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`Electronics, Inc. (“Petitioner”) and Patent Owner Broadcom Corporation (“Patent
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`Owner”) jointly move to terminate the present inter partes review proceeding, in
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`light of the parties’ resolution of their dispute relating to U.S. Patent No. 7,342,967
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`(the “’967 Patent”).
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`Termination is appropriate in the instant proceeding because the dispute
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`between the parties has been resolved and because full termination would
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`encourage settlement of Patent Office proceedings, consistent with federal judicial
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`preference and the management of limited judicial and Patent Office resources.
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`As required by 35 U.S.C. § 317(b), the parties are filing, concurrently
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`herewith, a true copy of their Settlement Agreement (executed on March 30, 2018)
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`as Exhibit 1015.1 Pursuant to Paragraphs 1.01 and 1.02 of the Settlement
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`Agreement, Petitioner and Patent Owner jointly agreed to terminate this
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`proceeding. Accordingly, the parties jointly request that this proceeding be
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`terminated under 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74. See, e.g., Rackspace
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`US, Inc., et. al v. PersonalWeb Technologies, LLC, et al., IPR2014-00057, Paper
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`1 The Settlement Agreement has been filed electronically via E2E for “Parties and
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`Board Only” to preserve confidentiality.
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`No. 32 (PTAB October 6, 2014). There are no additional collateral agreements or
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`understandings made in connection with, or in contemplation of, termination of the
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`inter partes review. The parties have stipulated to dismiss the related litigation
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`involving the ’967 Patent in Broadcom Corp. v. LG Electronics Inc., et al., No.
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`8:17-cv-00404, in the United States District Court for the Central District of
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`California; and International Trade Commission Investigation No. 337-TA-1047.
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`The Settlement Agreement definitively resolves the parties’ dispute regarding the
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`’967 patent. Termination of the proceeding is appropriate at this stage.
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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 proceeding has been
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`instituted and Patent Owner has filed a Patent Owner Response; however, the
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`Board has not issued a Final Written Decision.
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`Strong public policy considerations favor settlement between the parties to
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`an inter partes review proceeding. See Office Trial Practice Guide, 77 Fed. Reg.
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`48768 (Aug. 14, 2012). Additionally, no public interest or other factors weigh
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`against termination of this proceeding. Both Congress and federal courts have
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`expressed a strong interest in encouraging settlement in litigation. See, e.g., Delta
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`Air Lines, Inc. v. August, 450 U.S. 346, 352 (1981) (“The purpose of [Fed. R. Civ.
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`P.] 68 is to encourage the settlement of litigation.”); Bergh v. Dept. of Transp., 794
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`F.2d 1575, 1577 (Fed. Cir. 1986) (“The law favors settlement of cases.”), cert.
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`denied, 479 U.S. 950 (1986). The Federal Circuit places a particularly strong
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`emphasis on settlement. For example, it endorses the ability of parties to agree to
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`never challenge validity as part of a settlement. See Flex-Foot, Inc. v. CRP, Inc.,
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`238 F.3d 1362, 1370 (Fed. Cir. 2001); see also Cheyenne River Sioux Tribe v. U.S.,
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`806 F.2d 1046, 1050 (Fed. Cir. 1986) (noting that the law favors settlement to
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`reduce antagonism and hostility between parties).
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`Maintaining this review after the parties reach a settlement would discourage
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`future settlements by removing a primary motivation for settlement: eliminating
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`litigation risk by resolving the parties’ disputes and ending the pending
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`proceedings between them. Further, one of the primary reasons courts endorse
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`settlement is preservation of judicial resources. Maintaining this review after the
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`parties have settled their disputes would waste, rather than conserve, judicial
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`resources. For example, in the event the Board finds some of the subject claims
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`unpatentable, Patent Owner would be entitled to an appeal to the Federal Circuit.
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`As the only party remaining in the case, the Office would have to defend the
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`Board’s decision, which would further waste valuable judicial and administrative
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`resources.
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`The parties further request, pursuant to 37 C.F.R. § 42.74(c), that the
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`agreement (Ex. 1015) be treated as confidential business information and kept
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`separate from the files of the involved patent. The parties are filing, concurrently
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`herewith, a Joint Request to File Settlement Agreement as Business Confidential
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`Information pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74(c). For the
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`foregoing reasons, the parties jointly and respectfully request that the instant
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`proceeding be terminated.
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`Date: April 9, 2018
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`Respectfully submitted,
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`Date: April 9, 2018
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`/ Erika H. Arner /
`Erika H. Arner, Lead Counsel
` Reg. No. 57,540
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` Lead Counsel for Petitioner
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`Respectfully submitted,
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`/ John M. Caracappa /
`John M. Caracappa, Lead Counsel
` Reg. No. 43,532
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` Lead Counsel for Patent Owner
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that the foregoing
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`JOINT MOTION TO TERMINATE PROCEEDING PURSUANT TO 35
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`U.S.C. § 317 and 37 C.F.R. § 42.74 was served on April 9, 2018, via email
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`directed to counsel of record for the patent owner at the following:
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`John M. Caracappa
`Email: jcaracp@steptoe.com
`Thomas C. Yebernetsky
`Email: tyebernetsky@steptoe.com
`STEPTOE & JOHNSON LLP
`1330 Connecticut Ave., N.W.
`Washington, D.C. 20036
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`By: /Lauren K. Young/
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`Lauren K. Young
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`Litigation Legal Assistant
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`FINNEGAN, HENDERSON, FARABOW,
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`GARRETT & DUNNER, L.L.P.
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`Dated: April 9, 2018
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