IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`DTS, INC. AND PHORUS, INC.
`Petitioners,
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`v.
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`AVAGO TECHNOLOGIES GENERAL IP (SINGAPORE) PTE. LTD.
`Patent Owner
`
`Case No. IPR2017-02201
`Patent No. 6,684,060
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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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`DTS, INC. AND PHORUS, INC.
`Petitioners,
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`v.
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`AVAGO TECHNOLOGIES GENERAL IP (SINGAPORE) PTE. LTD.
`Patent Owner
`
`Case No. IPR2017-02201
`Patent No. 6,684,060
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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. IPR2017-02201
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`LIST OF EXHIBITS
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`Description
`U.S. Patent No. 6,684,060 (the “’060 patent”)
`File History for U.S. Patent No. 6,684,060
`File History for European Patent Application No. 01303365.9-2225
`U.S. Patent Application Publication No. 2004/0223622
`(“Lindemann”)
`U.S. Patent No. 5,832,024 (“Schotz”)
`U.S. Patent No. 6,922,730 (“Yaple”)
`File History For U.S. Patent Application No. 09/707,616
`U.S. Provisional Application No. 60/110,705
`U.S. Patent No. 5,946,343 (“Schotz 343”)
`Declaration of Stuart Lipoff
`Curriculum vitae of Stuart Lipoff
`Agreement 1
`Agreement 2
`Agreement 3
`Agreement 4
`Agreement 5
`Agreement 6
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`Exhibit
`Ex. 1001
`Ex. 1002
`Ex. 1003
`Ex. 1004
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`Ex. 1005
`Ex. 1006
`Ex. 1007
`Ex. 1008
`Ex. 1009
`Ex. 1010
`Ex. 1011
`Ex. 2001
`Ex. 2002
`Ex. 2003
`Ex. 2004
`Ex. 2005
`Ex. 2006
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`1
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`Case No. IPR2017-02201
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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 19, 2017, Petitioners DTS, Inc. and Phorus,
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`Inc. (collectively, “DTS”) and Patent Owner Avago Technologies General IP
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`(Singapore) Pte. Ltd. (“Avago”) jointly move to terminate the present inter partes
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`review proceeding in light of the parties’ settlement of their dispute insofar as it
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`relates to U.S. Patent No. 6,684,060 (“the ’060 patent”). The parties are filing,
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`concurrently herewith, true copies of their written Settlement Agreement
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`(Confidential Exhibit 2001), License Agreement (Confidential Exhibit 2002), and
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`collateral agreements (Confidential Exhibits 2003-2006) (collectively, the
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`“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 ’060 patent by resolving each of
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`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
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`2
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`Case No. IPR2017-02201
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`No. 16-cv-1033 (D. Del.);
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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, Inc., et al., Case No. 2:17-cv-05935-
`AB-JEM (C.D. Cal.);
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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 DTS and Avago, including any collateral
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`agreements, made in connection with, or in contemplation of, the termination of
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`the present proceeding as set forth in 35 U.S.C. § 317(b).
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`3
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`Case No. IPR2017-02201
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`The parties request that the Agreements (Confidential Exhibits 2001-2006)
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`be treated as business confidential information and kept separate from the file of
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`the ’060 patent. This confidentiality request extends to the title of the Agreements,
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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 Petitioners’ 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
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`as 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 ’060 patent, and have
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`agreed to terminate this inter partes review. The applicable statute, 35 U.S.C.
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`§ 317(a), provides that an inter partes review proceeding “shall be terminated with
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`4
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`Case No. IPR2017-02201
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`respect to any petitioner upon the joint request of the petitioner and the patent
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`owner, unless the Office has decided the merits of the proceeding before the
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`request for termination is filed.” In this case, the Patent Owner’s Preliminary
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`Response to the petition has not yet been filed, and the Office has not instituted the
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`petition and has made no decision on the merits. Moreover, as recognized by the
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`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 ’060 patent are Petitioners DTS, Inc. and Phorus, Inc.;
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`Patent Owner Avago Technologies General IP (Singapore) Pte. Ltd.; Broadcom
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`Limited, Avago Technologies General IP (Singapore) Pte. Ltd., Paradigm
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`Electronics Inc., MartinLogan, Ltd., Wren Sound Systems, LLC, McIntosh
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`5
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`Case No. IPR2017-02201
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`Laboratory, Inc., Definitive Technology, LLC, and Polk Audio, LLC. Those
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`litigations are now terminated or in the process of termination.
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`As for requirement (3), there are no related Inter Partes Review proceedings
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`for the ’060 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
`6,046,076
`6,218,215
`6,080,605
`6,408,167
`6,972,480
`6,573,609
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`IPR Case No.
`2017-00170
`2017-00171
`2017-00736
`2017-01470
`2017-01486
`2017-01645
`2017-01646
`2017-01649
`2018-00021
`2018-00135
`2018-00172
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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. No litigation or proceeding involving the ʼ060 Patent is contemplated in
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`the foreseeable future.
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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. IPR2017-02201
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`Respectfully submitted,
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`
`By_s/ 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
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`Attorneys for Petitioners
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`By_s/ 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 Patent Owner
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`7
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`Case No. IPR2017-02201
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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
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`the following counsel of record for Petitioner:
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`David A. Garr
`Covington & Burling LLP
`One CityCenter, 850 Tenth Street, NW
`Washington, DC 20001
`dgarr@cov .com
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`Andrea G. Reister
`Covington & Burling LLP
`One CityCenter, 850 Tenth Street, NW
`Washington, DC 20001
`areister@cov .com
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`Christopher K. Eppich
`Covington & Burling LLP
`1999 Avenue of the Stars, Suite 1500
`Los Angeles, CA 90067
`ceppich@cov .com
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`Laura E. Muschamp
`Covington & Burling LLP
`1999 Avenue of the Stars, Suite 1500
`Los Angeles, CA 90067
`lmuschamp@cov .com
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`Date: December 21, 2017
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`s/ Kristopher L. Reed
`Kristopher L. Reed
`Registration No.: 58,694
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`70413485V.1
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