IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`BROADCOM CORPORATION
`Petitioner,
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`v.
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`TESSERA, INC.
`Patent Owner
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`Case No. IPR2017-01645
`Patent No. 6,046,076
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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 CORPORATION
`Petitioner,
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`v.
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`TESSERA, INC.
`Patent Owner
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`Case No. IPR2017-01645
`Patent No. 6,046,076
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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. IPR2017-01645
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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 Corporation
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`(“Broadcom”) and Patent Owner Tessera, Inc. (“Tessera”) jointly move to terminate
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`the present inter partes review proceeding in light of the parties’ settlement of their
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`dispute insofar as it relates to U.S. Patent No. 6,046,076 (“the ’076 patent”). The
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`parties are filing, concurrently herewith, true copies of their written Settlement
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`Agreement (Confidential Exhibit 2009), License Agreement (Confidential Exhibit
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`2010), and collateral agreements (Confidential Exhibits 2011-2014) (collectively,
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`the “Agreements”) in connection with this matter as required by the statute. The
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`Agreements completely resolve all controversies between the Patent Owner and
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`Petitioner, including their dispute relating to the ’076 patent by resolving each of the
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`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. IPR2017-01645
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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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`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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`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 2009-2014) be
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`treated as business confidential information and kept separate from the file of the
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`’076 patent. This confidentiality request extends to the title of the Agreements,
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`Case No. IPR2017-01645
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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 Inter Partes Review Proceeding
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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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`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 element 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 ’076 patent, and have agreed
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`to terminate this inter partes review. The applicable statute, 35 U.S.C. § 317(a),
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`provides that an instituted inter partes review proceeding “shall be terminated with
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`respect to any petitioner upon the joint request of the petitioner and the patent owner,
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`unless the Office has decided the merits of the proceeding before the request for
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`termination is filed.” In this case, the Patent Owner’s Preliminary Response to the
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`Case No. IPR2017-01645
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`petition was filed on October 25, 2017, and, consequently, the Office has not
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`instituted the petition and has made no decision on the merits. Moreover, as
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`recognized by the rules of practice before the Board:
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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). Moreover, no public interest or other factors militate against
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`termination of this proceeding.
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`As for requirement (2), as discussed above, the only parties to any related
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`litigations involving the ‘076 patent are Patent Owner Tessera, Inc.; Petitioner
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`Broadcom Corporation; and Invensas Corporation, Tessera Advanced
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`Technologies, Inc., Avago Technologies U.S. Inc. and Avago Technologies
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`Wireless (U.S.A.) Manufacturing Inc. Broadcom Corporation, Avago Technologies
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`U.S. Inc. and Avago Technologies Wireless (U.S.A.) Manufacturing Inc. are all
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`subsidiaries of Broadcom Limited. Tessera, Inc., Invensas Corporation, and Tessera
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`Advanced Technologies, Inc. are all subsidiaries of Xperi Corporation. Those
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`litigations are now terminated or in the process of termination.
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`Case No. IPR2017-01645
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`As for requirement (3), there are no related Inter Partes Review proceedings
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`for the ’076 patent currently before the Patent Office. The parties are also
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`concurrently moving to terminate the following related proceedings before the
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`Patent Office:
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`Patent No.
`6,043,699
`6,278,653
`7,809,393
`6,856,007
`6,954,001
`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
`2017-00736
`2017-01470
`2017-01486
`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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`5
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`Date: December 21, 2017
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`Case No. IPR2017-01645
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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 /George C. Beck/
`George C. Beck
` Registration No.: 38,072
`Steven J. Rizzi
` Registration No.: 37,706
`Andrew R. Cheslock
` Registration No.: 68,577
`Foley & Lardner LLP
`3000 K Street, NW, Suite 600
`Washington, DC 20007
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`Attorneys for Petitioner
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`Case No. IPR2017-01645
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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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`George C. Beck (gbeck@foley.com)
`Steven J. Rizzi (srizzi@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
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` /Christopher K. Eppich/
`Christopher K. Eppich
`Registration No.: 52,868
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`Date: December 21, 2017
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