UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`INTRALINKS, INC.,
`Petitioner,
`
`v.
`
`LONE STAR DOCUMENT MANAGEMENT, LLC,
`Patent Owner.
`
`_______________
`
`Case CBM2016-00005
`Patent 6,918,082
`_______________
`
`
`
`JOINT MOTION TO TERMINATE WITH
`REQUEST TO KEEP SEPARATE
`
`
`
`
`
`
`
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`INTRALINKS, INC.,
`Petitioner,
`
`v.
`
`LONE STAR DOCUMENT MANAGEMENT, LLC,
`Patent Owner.
`
`_______________
`
`Case CBM2016-00005
`Patent 6,918,082
`_______________
`
`
`
`JOINT MOTION TO TERMINATE WITH
`REQUEST TO KEEP SEPARATE
`
`
`
`
`
`
`
`
`
`CBM2016-00005
`
`
`
`Attorney Docket No. 715510000006
`
`I.
`
`INTRODUCTION
`
`On January 8, 2016, the Board authorized the parties to jointly file a Motion
`
`to Terminate this proceeding by January 22, 2016. Petitioner Intralinks, Inc.
`
`(“Intralinks”) and Patent Owner Lone Star Document Management, LLC (“Lone
`
`Star”) jointly move to terminate the above-captioned proceeding in view of the
`
`parties’ agreement to settle their disputes. The parties include a true copy of the
`
`settlement agreement and jointly request that the agreement be kept separate
`
`pursuant to 37 CFR § 42.74(c). As explained below, there is good cause for
`
`granting the motion to terminate and the request to keep separate.
`
`II. BACKGROUND
`
`On October 13, 2015, Intralinks filed a petition requesting covered business
`
`method review of U.S. Patent No. 6,918,082 (the “’082 Patent”) (the “Petition”).
`
`On October 14, 2015, Intralinks filed a Complaint for Declaratory Judgment
`
`in the U.S. District Court for the Southern District of New York (“SDNY”) seeking
`
`a declaration of invalidity of the ’082 patent, Intralinks, Inc. v. Lone Star
`
`Document Management, LLC, Case No. 15-cv-8064-JSR (S.D.N.Y.).
`
`On November 18, 2015, the parties attended an Initial Pretrial Conference
`
`before Judge Rakoff in the SDNY.
`
`On November 19, 2015, the parties filed a stipulation of voluntary dismissal
`
`in the SDNY without prejudice.
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`CBM2016-00005
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`Attorney Docket No. 715510000006
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`On December 29, 2015, the parties executed a Confidential Settlement
`
`Agreement and Release (“Settlement Agreement”) agreeing to settle their disputes
`
`in connection with the ’082 Patent and agreeing to take reasonable actions to seek
`
`dismissal of the current CBM proceeding before the Board. A copy of the
`
`Settlement Agreement is attached as Ex. 1003. There are no other pending
`
`proceedings between the parties.
`
`III. GOOD CAUSE EXISTS FOR GRANTING THIS MOTION TO
`TERMINATE
`
`Good cause exists for terminating this proceeding because the parties have
`
`settled their disputes regarding the ’082 Patent and have agreed to jointly seek
`
`dismissal of this CBM proceeding. See Ex. 1003 at § 3. There is no co-pending
`
`district court litigation, as the parties jointly dismissed the SDNY district court
`
`litigation before executing the Settlement Agreement. There are no other pending
`
`legal proceedings between the parties.
`
`This CBM proceeding has not yet been instituted, and Lone Star’s
`
`preliminary response is not due until February 3, 2016. Therefore, judicial
`
`economy favors termination at this stage.
`
`IV. THE SETTLEMENT AGREEMENT SHOULD BE TREATED AS
`BUSINESS CONFIDENTIAL INFORMATION
`
`The parties request that the settlement agreement (Exhibit 1003) be treated
`
`as business confidential information and kept separate from the file. Pursuant to
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`CBM2016-00005
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`Attorney Docket No. 715510000006
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`35 U.S.C. § 317(b), upon request, “the agreement or understanding shall be treated
`
`as business confidential information, shall be kept separate from the file of the
`
`involved patents, and shall be made available only to Federal Government agencies
`
`on written request, or to any person on a showing of good cause.” 35 U.S.C.
`
`§ 317(b); see also 37 C.F.R. § 42.74(c). The parties’ request is consistent with the
`
`standards set forth in 35 U.S.C. § 317, which govern settlement of instituted
`
`reviews.
`
`V. CONCLUSION
`
`
`
`Because the parties have demonstrated that good cause exists for granting
`
`this Motion, the parties respectfully request that the Board grant this Motion to
`
`Terminate with Request to Keep Separate.
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`CBM2016-00005
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`Attorney Docket No. 715510000006
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`
`
`Dated: January 19, 2016
`
`Respectfully submitted,
`
`
`
`
`
`By /s/ Jonathan Bockman
`Jonathan Bockman
`Registration No.: 45,640
`MORRISON & FOERSTER LLP
`1650 Tysons Boulevard, Ste. 400
`McLean, Virginia 22102-4220
`Tel: (703) 760-7769
`Fax: (703) 760-7777
`jbockman@mofo.com
`
`Fahd Hussein Patel
`Registration No.: 61,780
`MORRISON & FOERSTER LLP
`2000 Pennsylvania Ave, NW Ste. 6000
`Washington, DC 20006-1888
`Tel: (202) 887-1500
`Fax: (202) 887-0763
`fpatel@mofo.com
`
`
`
`By /s/ Timothy Devlin
`Timothy Devlin
`Counsel for Patent Owner
`Registration No 41,706
`Devlin Law Firm LLC
`1306 N. Broom Street, Suite 1
`Wilmington, DE 19806
`T: (302) 449-9010
`F: (302) 353-4251
`tdevlin@devlinlawfirm.com
`xzhang@devlinlawfirm.com
`mmcclain@devlinlawfirm.com
`
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`CBM2016-00005
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`Attorney Docket No. 715510000006
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`Certification of Service Under 37 C.F.R. § 42.6(e)(4)
`
`A copy of this JOINT MOTION TO TERMINATE WITH REQUEST TO
`
`KEEP SEPARATE has been served on Patent Owner, Lone Star Document
`
`Management, LLC via e-mail on the date listed below:
`
`
`
`/s/ Jonathan Bockman
`Jonathan Bockman
`
`
`
`Timothy Devlin
`Counsel for Patent Owner
`Registration No 41,706
`Devlin Law Firm LLC
`1306 N. Broom Street, Suite 1
`Wilmington, DE 19806
`T: (302) 449-9010
`F: (302) 353-4251
`tdevlin@devlinlawfirm.com
`xzhang@devlinlawfirm.com
`mmcclain@devlinlawfirm.com
`
`
`Dated: January 19, 2016
`
`
`
`la-1307850
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