IPR2021-00108 (P.T.A.B. Jun. 30, 2021)

Advanced Cluster Systems, Inc.

Patent Trials and Appeals BoardJun 30, 2021

IPR2021-00108 (P.T.A.B. Jun. 30, 2021)

Trials@uspto.gov Paper 15 571-272-7822 Date: June 30, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ NVIDIA CORP., Petitioner, v. ADVANCED CLUSTER SYSTEMS, INC., Patent Owner. ____________ IPR2021-00108 Patent 8,676,877 B2 ____________ Before KARL D. EASTHOM, ARTHUR M. PESLAK, and SEAN P. O’HANLON, Administrative Patent Judges. EASTHOM, Administrative Patent Judge. TERMINATION Due to Settlement After Institution of Trial 35 U.S.C. § 317; 37 C.F.R. § 42.74 IPR2021-00108 Patent 8,676,877 B2 2 I. INTRODUCTION On June 17, 2021, with Board authorization, Petitioner and Patent Owner filed a joint Motion to terminate the above-captioned proceeding. Paper 13 (“Mot.”). Along with the joint Motion, the parties filed a copy of a “stipulated dismissal” that the parties assert they filed in district court litigation involving U.S. Pat. No. 8,676,877 B2 on June 11, 2021. Ex. 2039; see also Mot. 1. II. DISCUSSION 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.” And “[i]f no petitioner remains in the inter partes review, the Office may terminate the review.” Id. In this case, the Board issued a decision to institute inter partes review. Paper 9. However, the Board has not yet decided the merits of the proceeding or entered a final written decision. In the joint Motion, the parties state that they have settled their dispute and have reached an agreement to request termination of this inter partes review. Mot. 1–2. The parties state also that “the stipulated dismissal and . . . joint [M]otion constitute the entire agreement between the parties ‘made in connection with, or in contemplation of, the termination’ of this” inter partes review. Id. at 2. The proceeding involves no other parties. Accordingly, in the circumstances present here, it is appropriate to terminate the proceeding. IPR2021-00108 Patent 8,676,877 B2 3 See 37 C.F.R. §§ 42.72(a), 42.74. This Order does not constitute a final written decision pursuant to 35 U.S.C. § 318(a). III. ORDER Accordingly, it is ORDERED that the joint Motion is granted and this proceeding is terminated with respect to Petitioner and Patent Owner. IPR2021-00108 Patent 8,676,877 B2 4 PETITIONER: Brent Yamashita Jonathan Hicks DLA Piper LLP brent.yamashita@dlapiper.com jonathan.hicks@dlapiper.com NVIDIA-ACS-IPR@us.dlapiper.com PATENT OWNER: Jon W. Gurka Ted M. Cannon Cheryl T. Burgess Knobbe Martens Olson and Bear, LLP 2jwg@knobbe.com 2tmc@knobbe.com 2ctb@knobbe.com BoxZTANNL.017LP@knobbe.com