Tessera Advanced Technologies, Inc.

Patent Trials and Appeals Board

May 18, 2020

IPR2020-00581 (P.T.A.B. May. 18, 2020)

Trials@uspto.gov Paper 8
Tel: 571.272.7822 Entered: May 18, 2020
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

2
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.

IPR2020-00581
Patent 5,666,046

3
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