Advanced Micro Devices, Inc. et al. v. XtreamEdge, Inc. et al.

The Director, acting after sua sponte Director Review, granted Patent Owner's motion to vacate and terminate the IPRs. Petitioner had stipulated in the parallel litigation that it would not pursue the IPR grounds or any ground that could reasonably have been raised in an IPR if the Board instituted review. After institution, it served district court invalidity contentions that expressly incorporated each IPR petition, which violated the Stipulation and warranted reconsideration of institution under 35 U.S.C. § 314(a). A Sotera-style stipulation filed to avoid discretionary denial is a condition of institution that the Director will enforce. Incorporating the IPR grounds into district court invalidity contentions after institution can lead to termination, even if the grounds are only disclosed and not pursued at trial. Decision under review: the Board's October and November 2025 institution decisions in IPR2025-00223, -00478 and -00486. The issue was whether Petitioner violated its Stipulation (Ex. 1048) by serving invalidity contentions (Ex. 3103) that incorporated each IPR Petition. Petitioner argued that the district court, not the Office, should decide whether the Stipulation was violated. The Director disagreed because Petitioner filed the Stipulation with the Office to avoid discretionary denial, and stipulations as conditions of institution would be meaningless if parties could ignore them after institution. Non-precedential Board decisions declining to decide such questions do not bind the Director. Petitioner argued that it never raised the IPR grounds in an expert report, summary judgment motion, or at trial, and that the contentions were only a conditional disclosure. The Director found that stipulating it would not pursue the grounds and then serving contentions that included them was a violation. Petitioner's reading would let duplicative grounds stay in district court until the eve of trial and force Patent Owner to respond to them. Whether Petitioner was following the district court's Patent Local Rules is for the district court. The Director found a violation of the Stipulation and of Petitioner's representations to the Office. Such conduct undermines the Stipulation's purpose and the role of IPRs as a true alternative to litigation (Sotera), and warrants reconsideration of institution under § 314(a). Order: Patent Owner's Motion to Vacate and Terminate (Paper 27) is granted and the IPRs are terminated. KEY QUOTE: "Petitioner's action of incorporating the IPR grounds into its invalidity contentions violates the Stipulation it filed with the Office." (Paper 29, p. 4)