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Paper 8
`Trials@uspto.gov
`Entered: May 18, 2020
`Tel: 571.272.7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NVIDIA CORPORATION,
`Petitioner,
`v.
`
`
`
` TESSERA ADVANCED TECHNOLOGIES, INC.,
`Patent Owner.
`
`IPR2020-00581
`Patent 5,666,046
`
`
`
`
`
`
`
`
`
`Before MICHAEL R. ZECHER, TREVOR M. JEFFERSON, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`DECISION
`Settlement Prior to Institution of Trial
`37 C.F.R. § 42.74
`
`
`On February 14, 2020, NVIDIA Corporation (“Petitioner”) filed a
`Petition requesting inter partes review of claims 20–22 of U.S. Patent No.
`5,666,046 (“the ’046 patent,” Ex. 1001). Paper 2. On May 11, 2020,
`Petitioner and Tessera Advanced Technologies, Inc. (“Patent Owner”) filed
`a Joint Motion to Terminate, accompanied by a true copy of a written
`agreement resolving the parties’ disputes regarding the ’046 patent. Paper 6;
`
`

`

`IPR2020-00581
`Patent 5,666,046
`
`Ex. 1027. The Motion represents that the parties “have resolved their dispute
`with respect to the ’046 patent, and have agreed to terminate this inter partes
`review.” Id. at 2. The parties further represent that there are no other
`collateral agreements or understandings made in connection with, or in
`contemplation of, the termination of the proceeding; and the stipulation
`dismisses with prejudice Patent Owner’s claims in regard to the ’046 patent
`in the related district court lawsuit. Id. at 1–2.
`This proceeding is in a preliminary stage, and we have not yet issued a
`Decision whether to institute an inter partes review. Under these
`circumstances, we determine that terminating the proceeding is warranted,
`and we grant the parties’ Joint Motion. See 37 C.F.R. § 42.74.
`ORDER
`For the foregoing reasons, it is:
`ORDERED that the parties’ Joint Motion to Terminate is granted and
`the proceeding is terminated.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`2
`
`

`

`IPR2020-00581
`Patent 5,666,046
`
`PETITIONER:
`
`James M. Heintz
`Alan A. Limbach
`DLA PIPER LLP (US)
`jim.heintz@us.dlapiper.com
`alan.limbach@us.dlapiper.com
`NVIDIA-Tessera-IPR@us.dlapiper.com
`
`
`PATENT OWNER:
`
`Peter P. Chen
`David A. Garr
`Laura E. Muschamp
`COVINGTON & BURLING LLP
`pchen@cov.com
`dgarr@cov.com
`lmuschamp@cov.com
`
`3
`
`

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